IP legal updates from Shoosmiths LLPhttps://www.shoosmiths.co.uk/rss/5689.aspxIP legal updates from Shoosmiths LLPen-GBShoosmithshttps://www.shoosmiths.co.uk/-/media/shoosmiths/shoosmiths-rss-image.jpg?h=144&w=144IP legal updates from Shoosmiths LLPhttps://www.shoosmiths.co.uk/rss/5689.aspx60{2C63F990-61A3-4499-8FA4-BDB0EC88AA5C}https://www.shoosmiths.co.uk/client-resources/legal-updates/generic-challenge-stands-up-as-dosing-patent-flops.aspxGeneric challenge stands up as dosing patent flopsIn a UK Supreme Court judgment, ICOS Corporation and Eli Lilly’s patent for a dosing regime for tadalafil, a second in class erectile dysfunction drug, was found to lack inventiveness.Wed, 03 Apr 2019 00:00:00 +0100<![CDATA[Lisa Page and Victoria Bentley]]><![CDATA[In a UK Supreme Court judgment, ICOS Corporation and Eli Lilly’s patent for a dosing regime for tadalafil, a second in class erectile dysfunction drug, was found to lack inventiveness.]]>{FB766868-81FA-483D-94E2-CA5424F19858}https://www.shoosmiths.co.uk/news/press-releases/shoosmiths-advises-developer-on-exclusive-ps-vr-deal-14545.aspxShoosmiths advises video game developer Firesprite on exclusive PlayStation VR deal for The Persistence The Intellectual Property & Creative Industries team at Shoosmiths has advised leading video game development studio Firesprite Ltd on an exclusive license and distribution agreement with global interactive entertainment giant Sony.Thu, 16 Aug 2018 00:00:00 +0100<![CDATA[Laura Harper ]]><![CDATA[The Intellectual Property & Creative Industries team at Shoosmiths has advised leading video game development studio Firesprite Ltd on an exclusive license and distribution agreement with global interactive entertainment giant Sony.]]>{71A4CAF7-E853-48C9-9A1E-BB256423B5A2}https://www.shoosmiths.co.uk/client-resources/legal-updates/isnt-kit-kat-everyones-favourite-four-finger-chocolate-bar-14472.aspxIsn&#39;t Kit-Kat everyone&#39;s favourite four-finger chocolate bar? Apparently not, according to the European Court of Justice (ECJ) today which made an important ruling with regards to Kit Kat's famous shape. It said that in order for Nestle, the chocolate bar's owner, to retain its trade mark for the shape (that is the four long bars on a rectangular base), it had to be distinctive enough that it was recognisable in every single member state of the European Union (EU). The view of the ECJ was that Kit Kat was not as well known throughout the EU as it is here in the UK. As such, Nestlé's shape trade mark for its iconic UK chocolate bar may be removed from the trade mark register allowing for a plethora of copycat and own-label products. This will be good news for competitors to Nestle such as the likes of Mondelez which owns Cadbury, Milka, Oreo and its own four finger chocolate bar originating from Norway called Kvikk Lunsj. What is interesting is that Mondelez also owns Toblerone which itself has a shape trade mark for its triangular pattern. How long, therefore, before someone claims that not everyone in the EU recognizes the Toblerone shape? Generally, the ECJ decision now puts a high bar on successfully registering shape trade marks. How many, if any, brands are able to provide evidence sufficient to show that the shape of its product has distinctive enough character and is recognisable across all of the EU? DisclaimerThis document is for informational purposes only and does not constitute legal advice. It is recommended that specific professional advice is sought before acting on any of the information given. Fri, 27 Jul 2018 00:00:00 +0100<![CDATA[Gary Assim ]]><![CDATA[ Apparently not, according to the European Court of Justice (ECJ) today which made an important ruling with regards to Kit Kat's famous shape. It said that in order for Nestle, the chocolate bar's owner, to retain its trade mark for the shape (that is the four long bars on a rectangular base), it had to be distinctive enough that it was recognisable in every single member state of the European Union (EU). The view of the ECJ was that Kit Kat was not as well known throughout the EU as it is here in the UK. As such, Nestlé's shape trade mark for its iconic UK chocolate bar may be removed from the trade mark register allowing for a plethora of copycat and own-label products. This will be good news for competitors to Nestle such as the likes of Mondelez which owns Cadbury, Milka, Oreo and its own four finger chocolate bar originating from Norway called Kvikk Lunsj. What is interesting is that Mondelez also owns Toblerone which itself has a shape trade mark for its triangular pattern. How long, therefore, before someone claims that not everyone in the EU recognizes the Toblerone shape? Generally, the ECJ decision now puts a high bar on successfully registering shape trade marks. How many, if any, brands are able to provide evidence sufficient to show that the shape of its product has distinctive enough character and is recognisable across all of the EU? DisclaimerThis document is for informational purposes only and does not constitute legal advice. It is recommended that specific professional advice is sought before acting on any of the information given. ]]>{A11993D3-0134-48F9-8CBE-51D499779F5C}https://www.shoosmiths.co.uk/client-resources/legal-updates/ps-love-your-trademark-14286.aspxPS love your trademark A recent claim filed before the High Court emphasises why it is important to make use of a trade mark following registration. Phil Smith Be Gorgeous Limited, a hair and beauty business (Phil Smith), recently filed a trade mark infringement claim in the High Court against fashion giant Primark, in relation to the unauthorised use of its PS Love Your Hair trade mark. The UK trade mark was registered in 2011 by Phil Smith in respect of class 3 goods (broadly, beauty products). Primark has been using the PS Love Your Hair mark for some time as part of its PS line which also includes a broad range of products such as PS Nudes Eyeshadow, and more specifically the PS Love Your Nails and PS Love Your Skin. In a counter-move, separate from the trade mark infringement claim, Primark has applied to cancel Phil Smith's trade mark registration on the grounds of non-use. In law, a trade mark is vulnerable to cancellation if it has not been put to genuine use in the UK by or on behalf of the owner within the period of five years following registration, (or otherwise for any continuous five year period during the period of registration) where there are no proper reasons for non-use. Phil Smith has yet to launch a line of products or services under the PS Love Your Hair mark. However, a holding page on Phil Smith's website states that PS Love Your Hair is "coming soon". Despite the publication of the holding page, Phil Smith may still need to prove that it possesses a reputation or goodwill in the mark. In defence of Primark's action to cancel its trade mark registration, Phil Smith will need to show that its use of the PS Love Your Hair trade mark is genuinely commercial and not just token. Unless Phil Smith is able to produce clear evidence of use of the trade mark in relation to the goods for which the mark is registered, it will need to argue that the genuine use intention is satisfied through examination of the facts. If the Intellectual Property Office considers that the "coming soon" page does not constitute "genuine use" of the trade mark, Phil Smith will struggle to uphold its registration of the mark. Phil Smith may have avoided what could become a costly and time-consuming legal battle by carrying out a periodic review of its trade mark portfolio to highlight any registrations vulnerable to cancellation. Shoosmiths recommends that the following points are considered during a review: has the trade mark been genuinely used to at least a reasonable degree in the last few years? has the trade mark been used in relation to goods and/or services covered by the registration that are currently marketed or planned to be marketed? is there satisfactory evidence to prove use of the registered trade mark? are there any goods and/or services currently marketed or planned that are not covered by the registration? does the form of the trade mark as being used match the form registered? is the trade mark being used by the registered owner? If it is being used by a group company or third party, is there a licence in place? is the trade mark being used, or might it be used in the future, in a country or countries where it is not yet registered or an application filed? It is also important that trade mark owners take steps to police and enforce their rights in their registered brands. Allowing a third party to use a registered trade mark can damage the reputation in the mark and dilute its value. Primark could have taken steps to mitigate its current situation by carrying out a trade mark search before launching the products in question under the PS Love Your Hair mark. Conducting an appropriate search of the relevant trade mark registers will generally reveal any pre-existing trade marks which could prevent a company's registration or use of a particular mark and/or whether such use will infringe a third party's registered trade mark and therefore, expose the company to court proceedings. Shoosmiths' dedicated team of Intellectual Property lawyers and trade mark attorneys can conduct relevant searches before clients adopt a new brand, helping them to avoid any conflict with existing registrations. We have developed a specialist trade mark strategy for our clients, allowing effective brand protection and management and which enables serious issues to be dealt with quickly and cost effectively. A rapid response not only helps trade mark owners to develop and protect their brand, but also increases the possibility of successfully claiming certain remedies such as interim injunctive relief. If you would like to speak to one of our team about the issues raised in the above article or regarding brand protection please contact the writers. DisclaimerThis document is for informational purposes only and does not constitute legal advice. It is recommended that specific professional advice is sought before acting on any of the information given.Wed, 27 Jun 2018 00:00:00 +0100<![CDATA[Laura Harper ]]><![CDATA[ A recent claim filed before the High Court emphasises why it is important to make use of a trade mark following registration. Phil Smith Be Gorgeous Limited, a hair and beauty business (Phil Smith), recently filed a trade mark infringement claim in the High Court against fashion giant Primark, in relation to the unauthorised use of its PS Love Your Hair trade mark. The UK trade mark was registered in 2011 by Phil Smith in respect of class 3 goods (broadly, beauty products). Primark has been using the PS Love Your Hair mark for some time as part of its PS line which also includes a broad range of products such as PS Nudes Eyeshadow, and more specifically the PS Love Your Nails and PS Love Your Skin. In a counter-move, separate from the trade mark infringement claim, Primark has applied to cancel Phil Smith's trade mark registration on the grounds of non-use. In law, a trade mark is vulnerable to cancellation if it has not been put to genuine use in the UK by or on behalf of the owner within the period of five years following registration, (or otherwise for any continuous five year period during the period of registration) where there are no proper reasons for non-use. Phil Smith has yet to launch a line of products or services under the PS Love Your Hair mark. However, a holding page on Phil Smith's website states that PS Love Your Hair is "coming soon". Despite the publication of the holding page, Phil Smith may still need to prove that it possesses a reputation or goodwill in the mark. In defence of Primark's action to cancel its trade mark registration, Phil Smith will need to show that its use of the PS Love Your Hair trade mark is genuinely commercial and not just token. Unless Phil Smith is able to produce clear evidence of use of the trade mark in relation to the goods for which the mark is registered, it will need to argue that the genuine use intention is satisfied through examination of the facts. If the Intellectual Property Office considers that the "coming soon" page does not constitute "genuine use" of the trade mark, Phil Smith will struggle to uphold its registration of the mark. Phil Smith may have avoided what could become a costly and time-consuming legal battle by carrying out a periodic review of its trade mark portfolio to highlight any registrations vulnerable to cancellation. Shoosmiths recommends that the following points are considered during a review: has the trade mark been genuinely used to at least a reasonable degree in the last few years? has the trade mark been used in relation to goods and/or services covered by the registration that are currently marketed or planned to be marketed? is there satisfactory evidence to prove use of the registered trade mark? are there any goods and/or services currently marketed or planned that are not covered by the registration? does the form of the trade mark as being used match the form registered? is the trade mark being used by the registered owner? If it is being used by a group company or third party, is there a licence in place? is the trade mark being used, or might it be used in the future, in a country or countries where it is not yet registered or an application filed? It is also important that trade mark owners take steps to police and enforce their rights in their registered brands. Allowing a third party to use a registered trade mark can damage the reputation in the mark and dilute its value. Primark could have taken steps to mitigate its current situation by carrying out a trade mark search before launching the products in question under the PS Love Your Hair mark. Conducting an appropriate search of the relevant trade mark registers will generally reveal any pre-existing trade marks which could prevent a company's registration or use of a particular mark and/or whether such use will infringe a third party's registered trade mark and therefore, expose the company to court proceedings. Shoosmiths' dedicated team of Intellectual Property lawyers and trade mark attorneys can conduct relevant searches before clients adopt a new brand, helping them to avoid any conflict with existing registrations. We have developed a specialist trade mark strategy for our clients, allowing effective brand protection and management and which enables serious issues to be dealt with quickly and cost effectively. A rapid response not only helps trade mark owners to develop and protect their brand, but also increases the possibility of successfully claiming certain remedies such as interim injunctive relief. If you would like to speak to one of our team about the issues raised in the above article or regarding brand protection please contact the writers. DisclaimerThis document is for informational purposes only and does not constitute legal advice. It is recommended that specific professional advice is sought before acting on any of the information given.]]>{3060B683-04B7-49F2-AAFA-C7ED1E468A81}https://www.shoosmiths.co.uk/client-resources/legal-updates/louboutin-sees-red-in-a-good-way-14238.aspxLouboutin sees red, in a good way! Yesterday the European Court of Justice (ECJ) gave its judgment on the question of whether the Louboutin trade mark for its red sole could be invalidated because it consisted exclusively of the shape of the sole and was not a colour mark. The ECJ, in a rare move, ruled against the previous Opinion of the Advocate General, Maciej Szpunar, who had held that the Louboutin trade mark was a shape mark and therefore liable to be invalidated. Whilst the full judgment is not yet available, the press release from the ECJ confirms that 'where the registration of the mark did not seek to protect that shape [the sole of the shoe] but sought solely to protect the application of a colour .' it cannot be held that the mark consists exclusively of that shape. For the moment, the final decision is with the Dutch court in The Hague that referred the question to the ECJ. However, it looks highly likely that Louboutin's trade mark red sole will retain its cache to be included in future television series like Sex and the City and Breaking Bad! Further detail will be provided once the full judgment is published. DisclaimerThis document is for informational purposes only and does not constitute legal advice. It is recommended that specific professional advice is sought before acting on any of the information given. Wed, 13 Jun 2018 00:00:00 +0100<![CDATA[Gary Assim ]]><![CDATA[ Yesterday the European Court of Justice (ECJ) gave its judgment on the question of whether the Louboutin trade mark for its red sole could be invalidated because it consisted exclusively of the shape of the sole and was not a colour mark. The ECJ, in a rare move, ruled against the previous Opinion of the Advocate General, Maciej Szpunar, who had held that the Louboutin trade mark was a shape mark and therefore liable to be invalidated. Whilst the full judgment is not yet available, the press release from the ECJ confirms that 'where the registration of the mark did not seek to protect that shape [the sole of the shoe] but sought solely to protect the application of a colour .' it cannot be held that the mark consists exclusively of that shape. For the moment, the final decision is with the Dutch court in The Hague that referred the question to the ECJ. However, it looks highly likely that Louboutin's trade mark red sole will retain its cache to be included in future television series like Sex and the City and Breaking Bad! Further detail will be provided once the full judgment is published. DisclaimerThis document is for informational purposes only and does not constitute legal advice. It is recommended that specific professional advice is sought before acting on any of the information given. ]]>{85811077-63D4-47DE-90CE-DC943F5141A9}https://www.shoosmiths.co.uk/news/press-releases/market-demand-fuels-ip-team-growth-at-shoosmiths-14003.aspxMarket demand fuels IP &amp; Creative Industries team growth at Shoosmiths Manchester The Intellectual Property & Creative Industries team at Shoosmiths Manchester is on track for a record year, thanks in part to unprecedented demand from the region's thriving creative and digital sector. Download hi-res image Left to Right: Rachel Edwards, Laura Harper, Rachel Nicholls, Jack Beech, Carol Isherwood and Sonia Hill Headed by partner, Laura Harper, Shoosmiths' IP &amp; Creative experts are set to have doubled the team's 2016/2017 turnover by the end of this financial year, having advised a broad range of clients including technology companies, games developers, fashion and retail brands, communications and design agencies, arts organisations, television production companies and music businesses. The team also acts for many of the country's leading consumer and retail brands. The Manchester team acts for high-profile clients including Game - the UK's leading games retailer and world-famous toyshop, Hamleys. Shoosmiths is the appointed IP advisor to Manchester headquartered, Whispering Smith Ltd, the international clothing designer, importer, wholesaler and retailer which supplies some of the UK's leading high street and on-line brands. The team also acts for some of the region's leading interactive entertainment companies and communications agencies. This year has seen Shoosmiths IP &amp; creative industries legal prowess recognised at a national level too, with the team being shortlisted for the Law Firm of the Year category in the prestigious Music Week Awards 2018. Laura Harper, partner and Carol Isherwood, associate, will be taking clients to the ceremony to be held in London later this month. To help support the increased volume of work transacted and provide an enhanced offering to clients, Shoosmiths Manchester has strengthened the team with the appointment of specialist trade mark attorney, Sonia Hill who was previously at Marks &amp; Clerk; and associate Jack Beech, who joins the firm from Weightmans. Commenting on the team's success, Laura Harper, said, "From the outset, we have aligned ourselves with Manchester's vibrant and leading creative industries and digital sector, supporting businesses from start-up to large corporates - that strategy has paid dividends. We've been in an excellent position to grow with the sector both regionally and nationally and support the increasing need for quality accessible legal expertise to businesses which are reliant on the intellectual property (IP) which they produce - since the appointment of my partner, Rachel Nicholls, in 2016, Sonia in 2017 and Jack earlier this year we have been able to develop the Intellectual Property skillset further, in particular by strengthening our brand protection capabilities; and we believe that our client service offer is now unrivalled in this sector. "With our excellent new team members on board, who join a remarkable existing team of lawyers, we look forward to growing the practice further by offering clients an exceptional service."Tue, 10 Apr 2018 00:00:00 +0100<![CDATA[Laura Harper ]]><![CDATA[ The Intellectual Property & Creative Industries team at Shoosmiths Manchester is on track for a record year, thanks in part to unprecedented demand from the region's thriving creative and digital sector. Download hi-res image Left to Right: Rachel Edwards, Laura Harper, Rachel Nicholls, Jack Beech, Carol Isherwood and Sonia Hill Headed by partner, Laura Harper, Shoosmiths' IP &amp; Creative experts are set to have doubled the team's 2016/2017 turnover by the end of this financial year, having advised a broad range of clients including technology companies, games developers, fashion and retail brands, communications and design agencies, arts organisations, television production companies and music businesses. The team also acts for many of the country's leading consumer and retail brands. The Manchester team acts for high-profile clients including Game - the UK's leading games retailer and world-famous toyshop, Hamleys. Shoosmiths is the appointed IP advisor to Manchester headquartered, Whispering Smith Ltd, the international clothing designer, importer, wholesaler and retailer which supplies some of the UK's leading high street and on-line brands. The team also acts for some of the region's leading interactive entertainment companies and communications agencies. This year has seen Shoosmiths IP &amp; creative industries legal prowess recognised at a national level too, with the team being shortlisted for the Law Firm of the Year category in the prestigious Music Week Awards 2018. Laura Harper, partner and Carol Isherwood, associate, will be taking clients to the ceremony to be held in London later this month. To help support the increased volume of work transacted and provide an enhanced offering to clients, Shoosmiths Manchester has strengthened the team with the appointment of specialist trade mark attorney, Sonia Hill who was previously at Marks &amp; Clerk; and associate Jack Beech, who joins the firm from Weightmans. Commenting on the team's success, Laura Harper, said, "From the outset, we have aligned ourselves with Manchester's vibrant and leading creative industries and digital sector, supporting businesses from start-up to large corporates - that strategy has paid dividends. We've been in an excellent position to grow with the sector both regionally and nationally and support the increasing need for quality accessible legal expertise to businesses which are reliant on the intellectual property (IP) which they produce - since the appointment of my partner, Rachel Nicholls, in 2016, Sonia in 2017 and Jack earlier this year we have been able to develop the Intellectual Property skillset further, in particular by strengthening our brand protection capabilities; and we believe that our client service offer is now unrivalled in this sector. "With our excellent new team members on board, who join a remarkable existing team of lawyers, we look forward to growing the practice further by offering clients an exceptional service."]]>{D900D8C2-0D38-49A6-8699-3E3619F09723}https://www.shoosmiths.co.uk/client-resources/legal-updates/uk-industrial-strategy-creative-industries-sector-deal-14000.aspxUK Industrial Strategy - Creative Industries Sector Deal The Department for Digital, Culture, Media and Sport (DCMS) has published the Creative Industries Sector Deal aimed at making the UK the best place in the world for businesses in the creative industries. This is the latest sector deal to flow from the government's Industrial Strategy White Paper after sector deals for life sciences and the automotive industry were announced in late 2017/early 2018, respectively. The creative industries are key to the UK's future economic success - worth £92 billion they employ more than two million people and the sector is growing at twice the rate of the rest of the economy. The creative industries capitalise on individual creativity, talent and skill, and include businesses engaged in TV, computer games, fashion, music, communications, arts, publishing and film. The deal demonstrates the importance of the creative industries to the UK economy, together with the other sectors identified. Indeed, the power of the creative industries to deliver growth and jobs has recently been evidenced by the extremely successful Hull 2017 UK City of Culture bid. Shoosmiths was proud to be appointed as legal advisor to Hull 2017, which has seen the creation of nearly 800 jobs and almost £220 million invested in the city since Hull received UK City of Culture status. The main aims of the Creative Industries Sector Deal are that: more than £150 million will be jointly invested by government and industry to help the country's world-leading cultural and creative businesses thrive; a new Cultural Development Fund will provide cities and towns with access to £20 million, for investment in culture and creative industries; plans are in place to nurture and develop the next generation of creative talent, including an industry-led careers programme and a new London Screen Academy, which is set to open in September 2019. The sector deal sets out the government's commitment to the sector. Below, we look at a number of areas of interest brought out in the deal: The importance of intellectual property The UK Intellectual Property Office (IPO) has been working closely with the DCMS in order to help businesses in the creative industries to protect their intellectual property rights. In particular, the IPO and DCMS have committed to: provide funding of £2 million to extend the Get it Right campaign, to tackle online piracy and educate consumers on the value of copyright by directing them to legitimate websites; take action to crack down on copyright infringement; work with industry to enhance the skills base in valuing intellectual property rights; consider site blocking (and ways to introduce this); and publishing a programme of work to support the intellectual property valuation market by Autumn 2018. The Industrial Strategy White Paper identified several priorities which would need to be addressed in order to achieve the goal of making the UK the most attractive place for creative businesses, both large and small - one of these was how to support a sector reliant on intellectual property (IP). All businesses in the creative industries rely upon the intellectual property which they produce. The effective and efficient creation, acquisition, protection and commercialisation of intellectual property will be vital in achieving this goal. Our dedicated creative industries practice is made up of skilled intellectual property lawyers who have previously worked in the creative industries and digital sector. We know the importance of intellectual property to enable businesses to effectively trade, raise funds and grow. As such, we are pleased that the UK's statutory framework for the protection of IP has been recognised as world-leading and we welcome the steps proposed to help prevent IP infringement, particularly in the on-line environment. The commitments set out in the Creative Industries Sector Deal to protect business IP and provide training to recognise the value of IP, will support the ambition of the sector deal to make Britain the best place to locate a creative business. Virtual reality and augmented reality The deal will help drive innovation by joint public and industry investment in eight partnerships of business and universities, backed by a national research centre, and a commitment to investigate barriers to creative businesses in taking up research and development funding., Shoosmiths is a partner organisation in the Creative North West Consortium shortlisted for the Arts and Humanities Research Council (AHRC ) funded Creative Industries Clusters Programme detailed in the Creative Industries Sector Deal where we will provide particular expertise and support on intellectual property law. The deal also pledges joint investment in a strategic innovation challenge set to transform creative content immersive technologies like virtual, augmented and mixed reality. Immersive technologies such as virtual reality video games and augmented reality projects will receive over £33 million of investment. This funding will be used to support this sector, which is predicted to grow significantly in the next five years, with consumer spending on video games set to reach £5 billion by 2021. The government will also provide additional support to the highly successful UK Games Fund with an additional £1.5 million over the next two years. Shoosmiths provides specialist advice to businesses and studios in UK's video games industry (the largest in Europe, and is the fifth largest globally). The team continues to: represent a number of leading independent game development studios; offer advice in relation to the creation, protection and commercialisation of intellectual property; offer tax advice on how studios could benefit from the UK's favorable video games tax regime; provide advice on structuring development deals for studios. Members of the team recently attended The Game Developers Conference in San Francisco. GDC is one of the largest annual gatherings of video game development professionals in the world. The team attended to support clients and ensure that they remain completely up to date with industry trends and developments. Music With a value of over £800 million the music, arts and culture sector is significant in terms of its contribution to the creative industries and the wider British economy. Members of our team have worked in the music industry and this provides us with a genuine understanding of the issues which businesses face day-to-day; enabling us to provide legal advice which is relevant and accessible. In addition to acting for labels, publishers and management, our work aligns with the ambitions of the sector deal in that we also support education on the music industry by speaking and lecturing on music law and business affairs at leading music educational bodies including BIMM, LIPA and Leeds College of Music. Film/TV studios expansion Over the past five years, inward investment in Britain's film and high-end TV industries has grown by more than 100%, to over £2 billion production expenditures a year and confidence and growth are set to continue at a similar rate over the next seven years. Film studios across the country are increasing their capacity to keep up with demand for production space. In response to this, the Pinewood, Warner Bros Leavesden, Pacificia Ventures Barking and Dagenham and Littlewoods and the Space Project studios have all increased their capacity. The Creative Industries Sector Deal reflects the confidence in the sector and the opportunities presented by it. We look forward to seeing how the collaborations develop and to continuing working with businesses in the sector to support them, as it is their success which will enable the UK to realise its ambition to be the best place in the world for the creative industries. DisclaimerThis document is for informational purposes only and does not constitute legal advice. It is recommended that specific professional advice is sought before acting on any of the information given.Fri, 06 Apr 2018 00:00:00 +0100<![CDATA[Laura Harper ]]><![CDATA[ The Department for Digital, Culture, Media and Sport (DCMS) has published the Creative Industries Sector Deal aimed at making the UK the best place in the world for businesses in the creative industries. This is the latest sector deal to flow from the government's Industrial Strategy White Paper after sector deals for life sciences and the automotive industry were announced in late 2017/early 2018, respectively. The creative industries are key to the UK's future economic success - worth £92 billion they employ more than two million people and the sector is growing at twice the rate of the rest of the economy. The creative industries capitalise on individual creativity, talent and skill, and include businesses engaged in TV, computer games, fashion, music, communications, arts, publishing and film. The deal demonstrates the importance of the creative industries to the UK economy, together with the other sectors identified. Indeed, the power of the creative industries to deliver growth and jobs has recently been evidenced by the extremely successful Hull 2017 UK City of Culture bid. Shoosmiths was proud to be appointed as legal advisor to Hull 2017, which has seen the creation of nearly 800 jobs and almost £220 million invested in the city since Hull received UK City of Culture status. The main aims of the Creative Industries Sector Deal are that: more than £150 million will be jointly invested by government and industry to help the country's world-leading cultural and creative businesses thrive; a new Cultural Development Fund will provide cities and towns with access to £20 million, for investment in culture and creative industries; plans are in place to nurture and develop the next generation of creative talent, including an industry-led careers programme and a new London Screen Academy, which is set to open in September 2019. The sector deal sets out the government's commitment to the sector. Below, we look at a number of areas of interest brought out in the deal: The importance of intellectual property The UK Intellectual Property Office (IPO) has been working closely with the DCMS in order to help businesses in the creative industries to protect their intellectual property rights. In particular, the IPO and DCMS have committed to: provide funding of £2 million to extend the Get it Right campaign, to tackle online piracy and educate consumers on the value of copyright by directing them to legitimate websites; take action to crack down on copyright infringement; work with industry to enhance the skills base in valuing intellectual property rights; consider site blocking (and ways to introduce this); and publishing a programme of work to support the intellectual property valuation market by Autumn 2018. The Industrial Strategy White Paper identified several priorities which would need to be addressed in order to achieve the goal of making the UK the most attractive place for creative businesses, both large and small - one of these was how to support a sector reliant on intellectual property (IP). All businesses in the creative industries rely upon the intellectual property which they produce. The effective and efficient creation, acquisition, protection and commercialisation of intellectual property will be vital in achieving this goal. Our dedicated creative industries practice is made up of skilled intellectual property lawyers who have previously worked in the creative industries and digital sector. We know the importance of intellectual property to enable businesses to effectively trade, raise funds and grow. As such, we are pleased that the UK's statutory framework for the protection of IP has been recognised as world-leading and we welcome the steps proposed to help prevent IP infringement, particularly in the on-line environment. The commitments set out in the Creative Industries Sector Deal to protect business IP and provide training to recognise the value of IP, will support the ambition of the sector deal to make Britain the best place to locate a creative business. Virtual reality and augmented reality The deal will help drive innovation by joint public and industry investment in eight partnerships of business and universities, backed by a national research centre, and a commitment to investigate barriers to creative businesses in taking up research and development funding., Shoosmiths is a partner organisation in the Creative North West Consortium shortlisted for the Arts and Humanities Research Council (AHRC ) funded Creative Industries Clusters Programme detailed in the Creative Industries Sector Deal where we will provide particular expertise and support on intellectual property law. The deal also pledges joint investment in a strategic innovation challenge set to transform creative content immersive technologies like virtual, augmented and mixed reality. Immersive technologies such as virtual reality video games and augmented reality projects will receive over £33 million of investment. This funding will be used to support this sector, which is predicted to grow significantly in the next five years, with consumer spending on video games set to reach £5 billion by 2021. The government will also provide additional support to the highly successful UK Games Fund with an additional £1.5 million over the next two years. Shoosmiths provides specialist advice to businesses and studios in UK's video games industry (the largest in Europe, and is the fifth largest globally). The team continues to: represent a number of leading independent game development studios; offer advice in relation to the creation, protection and commercialisation of intellectual property; offer tax advice on how studios could benefit from the UK's favorable video games tax regime; provide advice on structuring development deals for studios. Members of the team recently attended The Game Developers Conference in San Francisco. GDC is one of the largest annual gatherings of video game development professionals in the world. The team attended to support clients and ensure that they remain completely up to date with industry trends and developments. Music With a value of over £800 million the music, arts and culture sector is significant in terms of its contribution to the creative industries and the wider British economy. Members of our team have worked in the music industry and this provides us with a genuine understanding of the issues which businesses face day-to-day; enabling us to provide legal advice which is relevant and accessible. In addition to acting for labels, publishers and management, our work aligns with the ambitions of the sector deal in that we also support education on the music industry by speaking and lecturing on music law and business affairs at leading music educational bodies including BIMM, LIPA and Leeds College of Music. Film/TV studios expansion Over the past five years, inward investment in Britain's film and high-end TV industries has grown by more than 100%, to over £2 billion production expenditures a year and confidence and growth are set to continue at a similar rate over the next seven years. Film studios across the country are increasing their capacity to keep up with demand for production space. In response to this, the Pinewood, Warner Bros Leavesden, Pacificia Ventures Barking and Dagenham and Littlewoods and the Space Project studios have all increased their capacity. The Creative Industries Sector Deal reflects the confidence in the sector and the opportunities presented by it. We look forward to seeing how the collaborations develop and to continuing working with businesses in the sector to support them, as it is their success which will enable the UK to realise its ambition to be the best place in the world for the creative industries. DisclaimerThis document is for informational purposes only and does not constitute legal advice. It is recommended that specific professional advice is sought before acting on any of the information given.]]>{EDFD0159-04B3-45FF-87FA-CFA3AB6FF820}https://www.shoosmiths.co.uk/news/press-releases/shoosmiths-at-industry-conference-in-san-francisco-13977.aspxShoosmiths interactive entertainment specialists at industry conference in San Francisco National law firm Shoosmiths has joined some of the biggest names in the global games community at a major conference in San Francisco. Download hi-res image Laura Harper The Game Developers Conference (GDC) is the world's largest professional games industry event, attracting more than 26,000 delegates over five days. Headed by Intellectual Property &amp; Creative Industries partner Laura Harper and Corporate Tax partner Kate Featherstone, the Shoosmiths specialist interactive entertainment and games lawyers joined business professionals from across the industry to network, exchange knowledge and facilitate development deals. The Shoosmiths Creative Industries and Digital experts were joined at GDC by clients. Whilst there, the team met with industry players including investment banking firm GP Bullhound and Sony, as well as intermediary law firms and UK Government agencies. During the conference, Shoosmiths offered advice on IP licensing and negotiating development deals. The team also provided tax advice on how studios could benefit from the UK's favourable video games tax regime. Laura Harper, partner at Shoosmiths, said: "We were delighted to send a delegation to this year's Game Developers Conference, which provided a useful opportunity for us to network and catch up with clients and contacts from across the world. "The conference brought together businesses from each corner of the international games sector. We enjoyed meeting with developers and sharing our experiences and advice as they seek to expand their businesses overseas and explore the potential of the UK's market." The conference attracted some of the biggest brands in the games and interactive entertainment industry including Amazon, Sony, Google, Nintendo and Facebook/Oculus. This year's event was dominated by new technologies, including virtual reality (VR), augmented reality (AR) and artificial intelligence (AI).Wed, 28 Mar 2018 00:00:00 +0100<![CDATA[Laura Harper ]]><![CDATA[ National law firm Shoosmiths has joined some of the biggest names in the global games community at a major conference in San Francisco. Download hi-res image Laura Harper The Game Developers Conference (GDC) is the world's largest professional games industry event, attracting more than 26,000 delegates over five days. Headed by Intellectual Property &amp; Creative Industries partner Laura Harper and Corporate Tax partner Kate Featherstone, the Shoosmiths specialist interactive entertainment and games lawyers joined business professionals from across the industry to network, exchange knowledge and facilitate development deals. The Shoosmiths Creative Industries and Digital experts were joined at GDC by clients. Whilst there, the team met with industry players including investment banking firm GP Bullhound and Sony, as well as intermediary law firms and UK Government agencies. During the conference, Shoosmiths offered advice on IP licensing and negotiating development deals. The team also provided tax advice on how studios could benefit from the UK's favourable video games tax regime. Laura Harper, partner at Shoosmiths, said: "We were delighted to send a delegation to this year's Game Developers Conference, which provided a useful opportunity for us to network and catch up with clients and contacts from across the world. "The conference brought together businesses from each corner of the international games sector. We enjoyed meeting with developers and sharing our experiences and advice as they seek to expand their businesses overseas and explore the potential of the UK's market." The conference attracted some of the biggest brands in the games and interactive entertainment industry including Amazon, Sony, Google, Nintendo and Facebook/Oculus. This year's event was dominated by new technologies, including virtual reality (VR), augmented reality (AR) and artificial intelligence (AI).]]>{46296434-011C-46B9-91B4-8DA442BF6C60}https://www.shoosmiths.co.uk/news/press-releases/shoosmiths-shortlisted-law-firm-of-year-at-music-awards-13877.aspxShoosmiths shortlisted for &#39;Law Firm of the Year&#39; at prestigious Music Week Awards The Creative Industries team at leading national law firm, Shoosmiths in Manchester have been nominated for 'Law Firm of the Year' at the prestigious Music Week Awards. Download hi-res image Carol Isherwood and Laura Harper After a record-breaking year for entries, the six-strong Shoosmiths team led by partner Laura Harper and including associate, Carol Isherwood, is up against other leading London-based media and entertainment law firms and is the only shortlisted team based outside of the capital - a first for a national legal practice. Music Week has been the UK's leading music industry publication for over 50 years and the awards recognise excellence across the industry with categories including PR Campaign of the Year, Record Company of the Year and Festival of the Year. Other nominees up for an award include record labels: Syco, Polydor, Virgin EMI, Warner Bros; festivals: Kendal Calling, Reading &amp; Leeds and Glastonbury, as well as the Management teams for Ed Sheeran, Liam Gallagher, Rag'N'Bone Man and Stormzy. The Shoosmiths Creative Industries team is recognised as a leading media and entertainment practice, holding a Tier 1 Ranking in the Legal 500 directory. They act for a broad range of clients including record labels, producers, songwriters, bands, music managers and festivals who they assist to protect and commercialise their work, as well as advising major brands in respect of synchronisation rights and brand endorsements with artists and labels. Laura Harper, head of the IP &amp; Creative Industries team at Shoosmiths, said: "With such a London-centric music industry, the fact that the team has been shortlisted for the work we do both regionally and nationally by Music Week, is testament to our investment in the practice and the standard of work. We are incredibly lucky to work with such interesting clients within the music business on projects across the UK and beyond. "The last year has seen us advise on agreements between our clients and record labels Universal, BMG and Heavenly, music publishers Kobalt and Universal as well as agreements with Global Media and Entertainment Limited. We have also advised in a number of litigious matters concerning bands which are household names. Being shortlisted is an acknowledgement of the quality of the work we do and we are delighted to be amongst such esteemed company." The awards are set to take place on Thursday 26 April at the Grosvenor Hotel in London.Tue, 06 Mar 2018 00:00:00 Z<![CDATA[Laura Harper Carol Isherwood ]]><![CDATA[ The Creative Industries team at leading national law firm, Shoosmiths in Manchester have been nominated for 'Law Firm of the Year' at the prestigious Music Week Awards. Download hi-res image Carol Isherwood and Laura Harper After a record-breaking year for entries, the six-strong Shoosmiths team led by partner Laura Harper and including associate, Carol Isherwood, is up against other leading London-based media and entertainment law firms and is the only shortlisted team based outside of the capital - a first for a national legal practice. Music Week has been the UK's leading music industry publication for over 50 years and the awards recognise excellence across the industry with categories including PR Campaign of the Year, Record Company of the Year and Festival of the Year. Other nominees up for an award include record labels: Syco, Polydor, Virgin EMI, Warner Bros; festivals: Kendal Calling, Reading &amp; Leeds and Glastonbury, as well as the Management teams for Ed Sheeran, Liam Gallagher, Rag'N'Bone Man and Stormzy. The Shoosmiths Creative Industries team is recognised as a leading media and entertainment practice, holding a Tier 1 Ranking in the Legal 500 directory. They act for a broad range of clients including record labels, producers, songwriters, bands, music managers and festivals who they assist to protect and commercialise their work, as well as advising major brands in respect of synchronisation rights and brand endorsements with artists and labels. Laura Harper, head of the IP &amp; Creative Industries team at Shoosmiths, said: "With such a London-centric music industry, the fact that the team has been shortlisted for the work we do both regionally and nationally by Music Week, is testament to our investment in the practice and the standard of work. We are incredibly lucky to work with such interesting clients within the music business on projects across the UK and beyond. "The last year has seen us advise on agreements between our clients and record labels Universal, BMG and Heavenly, music publishers Kobalt and Universal as well as agreements with Global Media and Entertainment Limited. We have also advised in a number of litigious matters concerning bands which are household names. Being shortlisted is an acknowledgement of the quality of the work we do and we are delighted to be amongst such esteemed company." The awards are set to take place on Thursday 26 April at the Grosvenor Hotel in London.]]>{80BFFE46-0F79-4BCD-AD2D-E09F7EE4B762}https://www.shoosmiths.co.uk/client-resources/legal-updates/are-trade-marks-fair-game-for-use-as-google-adwords-12614.aspxAre trade marks fair game for use as Google AdWords? This article looks at the rise of online advertising amongst brand owners and the impact on Google AdWords. Expenditure on internet advertising in the UK rose by over 15% in the second half of 2016 and is set to increase further this year. With the appetite for online and mobile advertising growing amongst brand owners, the role of Google AdWords appears to be increasing in significance. What are AdWords? Google AdWords is an advertising service which allows advertisers to have accessible advertisements appear in Google's search results. Advertisers that use AdWords can purchase one or more keywords relevant to their business so that when potential customers type the keyword into Google's search engine, the advertiser's advertisment will appear above or next to the search results, the benefit being that the advertisment is displayed above the 'natural' results. If more than one advertiser purchases a particular keyword, advertisers can bid on the order of the display; the highest bidder achieves the highest position in the results. Google does not prevent advertisers from using third party trade marks as keywords in its AdWords service. It is this permitted use of a competitor's trade mark that has led to a number of high-profile brands attempting to assert their intellectual property rights through the courts, with varying degrees of success. The cases are few and far between, but they do provide interesting guidance on what may and may not amount to trade mark infringement. In recent years, the courts' view on such cases has tipped in favour of promoting competition over protecting the rights of trade mark owners Can advertisers use third party trade marks as 'keywords' without infringing the rights of the trade mark owner? The short answer is: yes. Provided that the advertiser makes it clear that the goods and services it is selling originate from the advertiser and not the trade mark owner, then the use of a keyword which is a registered trade mark is unlikely to be infringing. Conversely, if it is unclear or confusing to customers whether there is some economic link between the advertiser and the trade mark owner, then there is a likelihood of infringement. The European Court of Justice confirmed that the use by an advertiser of a keyword that is identical to a third party trade mark constitutes 'use in the course of trade' (a prerequisite to establish trade mark infringement), but that such use shall not be infringing where it is clear that there is no commercial connection between the advertiser and the trade mark owner. The reasonably well-informed and observant internet user In the case of Interflora Inc v Marks and Spencer Plc [2014], the court established the principle of the 'reasonably well-informed and observant internet user'. If such a user would be able to tell that the advertisement that appeared as a result of inputting a particular keyword was not the advertisement of the trade mark owner, but that of a competitor, then there would be no harm to the distinctiveness of the trade mark and, therefore, no infringement. In this case the court also said that the use of a third party trade mark as a keyword is lawful as long as it is done with 'due cause'. Exercising 'due cause' would be engaging in fair commercial competition with a trade mark proprietor, offering goods and services as an alternative to the trade mark owner's goods and services. Therefore, in such circumstances, when a competitor uses a third party registered trade mark in its AdWords campaign by purchasing and bidding on keywords that are third party registered trade marks, such use can be fair. Honesty is the best policy Honest use of a trade mark is a defence to trade mark infringement. The use must be in accordance with honest practices in industrial or commercial matters. For example, a trade mark may be used to describe the contents of a website or to identify the goods or services sold on the website or as part of a legitimate comparative advertising campaign. However, it's unlikely that the use of a keyword (which is invisible on the website and to the consumer) for comparative advertising purposes would be held to be honest use. The case of Victoria Plum Ltd (t/a VictoriaPlum.com) v Victorian Plumbing Ltd &amp; Ors [2016] concerned the purchase by Victorian Plumbing Ltd (Victoria Plumbing) of the keywords 'Victoria Plumb' and 'Victoria Plumbing'. VictoriaPlum.com owns several EU and UK trade mark registrations for the mark VICTORIA PLUMB. Victoria Plum Ltd (previously, Victoria Plumb Ltd) (VictoriaPlum.com) sued Victorian Plumbing for trade mark infringement. The court decided that Victorian Plumbing's advertisements would not enable a reasonably well-informed and observant internet user to ascertain whether the goods or services originated from VictoriaPlum.com or from a business commercially connected to it. In the circumstances, Victorian Plumbing had infringed Victoria Plum's trade mark by using it in Victoria Plumbing's Google AdWords campaign. In the context of honest use, the court said that, where two entities have co-existed for a long period of time which have the same or similar names, it is inevitable that confusion will arise. To an extent, this confusion will have to be tolerated. However, one of the entities must not take steps to exacerbate the level of confusion beyond what is inevitable. In the case of VictoriaPlum.com, it was difficult for customers to be certain of the origin of the goods and so the use of the keywords was dishonest. What can trade mark owners do? If infringement is suspected, a trade mark owner can submit a complaint to Google - Google will undertake a 'limited investigation' if a trade mark used as a keyword in combination with text in an advertisment is confusing as to the origin of the advertised goods and/or services. If Google decides that it is confusing, it will prevent the advertisement from running Conduct regular checks - search for the trade mark on a number of search engine providers. This will reveal hidden uses of the trade mark as keywords (as with AdWords or metatags) as well as visible uses Beware of making unjustified threats of trade mark infringement proceedings - this can give rise to a cause of action for the advertiser who may bring a claim against the trade mark owner. Consider taking legal advice on how best to protect your brand from unauthorised on-line use. What can advertisers do? Transparency is key. Transparency in the advertisement is necessary to protect the consumer; also, the more transparent the advertisement, the less likelihood of confusion in the minds of the public and, therefore, of trade mark infringement. Advertisers should bear in mind that customers searching for a particular brand may be confused when presented with a different brand offering the same or similar goods and/or services. Provided that the advertiser ensures that customers can ascertain where the goods and/or services originate from, purchasing and bidding on third party trade-marked keywords is fair game in the on-line world. How can we help? For advice on trade mark or copyright issues please contact Laura Harper, Partner: laura.harper@shoosmiths.co.uk or 03700 865881 or Rachel Edwards, Solicitor: rachel.edwards@shoosmiths.co.uk or 03700 865792. DisclaimerThis document is for informational purposes only and does not constitute legal advice. It is recommended that specific professional advice is sought before acting on any of the information given.Thu, 16 Mar 2017 00:00:00 Z<![CDATA[Laura Harper ]]><![CDATA[ This article looks at the rise of online advertising amongst brand owners and the impact on Google AdWords. Expenditure on internet advertising in the UK rose by over 15% in the second half of 2016 and is set to increase further this year. With the appetite for online and mobile advertising growing amongst brand owners, the role of Google AdWords appears to be increasing in significance. What are AdWords? Google AdWords is an advertising service which allows advertisers to have accessible advertisements appear in Google's search results. Advertisers that use AdWords can purchase one or more keywords relevant to their business so that when potential customers type the keyword into Google's search engine, the advertiser's advertisment will appear above or next to the search results, the benefit being that the advertisment is displayed above the 'natural' results. If more than one advertiser purchases a particular keyword, advertisers can bid on the order of the display; the highest bidder achieves the highest position in the results. Google does not prevent advertisers from using third party trade marks as keywords in its AdWords service. It is this permitted use of a competitor's trade mark that has led to a number of high-profile brands attempting to assert their intellectual property rights through the courts, with varying degrees of success. The cases are few and far between, but they do provide interesting guidance on what may and may not amount to trade mark infringement. In recent years, the courts' view on such cases has tipped in favour of promoting competition over protecting the rights of trade mark owners Can advertisers use third party trade marks as 'keywords' without infringing the rights of the trade mark owner? The short answer is: yes. Provided that the advertiser makes it clear that the goods and services it is selling originate from the advertiser and not the trade mark owner, then the use of a keyword which is a registered trade mark is unlikely to be infringing. Conversely, if it is unclear or confusing to customers whether there is some economic link between the advertiser and the trade mark owner, then there is a likelihood of infringement. The European Court of Justice confirmed that the use by an advertiser of a keyword that is identical to a third party trade mark constitutes 'use in the course of trade' (a prerequisite to establish trade mark infringement), but that such use shall not be infringing where it is clear that there is no commercial connection between the advertiser and the trade mark owner. The reasonably well-informed and observant internet user In the case of Interflora Inc v Marks and Spencer Plc [2014], the court established the principle of the 'reasonably well-informed and observant internet user'. If such a user would be able to tell that the advertisement that appeared as a result of inputting a particular keyword was not the advertisement of the trade mark owner, but that of a competitor, then there would be no harm to the distinctiveness of the trade mark and, therefore, no infringement. In this case the court also said that the use of a third party trade mark as a keyword is lawful as long as it is done with 'due cause'. Exercising 'due cause' would be engaging in fair commercial competition with a trade mark proprietor, offering goods and services as an alternative to the trade mark owner's goods and services. Therefore, in such circumstances, when a competitor uses a third party registered trade mark in its AdWords campaign by purchasing and bidding on keywords that are third party registered trade marks, such use can be fair. Honesty is the best policy Honest use of a trade mark is a defence to trade mark infringement. The use must be in accordance with honest practices in industrial or commercial matters. For example, a trade mark may be used to describe the contents of a website or to identify the goods or services sold on the website or as part of a legitimate comparative advertising campaign. However, it's unlikely that the use of a keyword (which is invisible on the website and to the consumer) for comparative advertising purposes would be held to be honest use. The case of Victoria Plum Ltd (t/a VictoriaPlum.com) v Victorian Plumbing Ltd &amp; Ors [2016] concerned the purchase by Victorian Plumbing Ltd (Victoria Plumbing) of the keywords 'Victoria Plumb' and 'Victoria Plumbing'. VictoriaPlum.com owns several EU and UK trade mark registrations for the mark VICTORIA PLUMB. Victoria Plum Ltd (previously, Victoria Plumb Ltd) (VictoriaPlum.com) sued Victorian Plumbing for trade mark infringement. The court decided that Victorian Plumbing's advertisements would not enable a reasonably well-informed and observant internet user to ascertain whether the goods or services originated from VictoriaPlum.com or from a business commercially connected to it. In the circumstances, Victorian Plumbing had infringed Victoria Plum's trade mark by using it in Victoria Plumbing's Google AdWords campaign. In the context of honest use, the court said that, where two entities have co-existed for a long period of time which have the same or similar names, it is inevitable that confusion will arise. To an extent, this confusion will have to be tolerated. However, one of the entities must not take steps to exacerbate the level of confusion beyond what is inevitable. In the case of VictoriaPlum.com, it was difficult for customers to be certain of the origin of the goods and so the use of the keywords was dishonest. What can trade mark owners do? If infringement is suspected, a trade mark owner can submit a complaint to Google - Google will undertake a 'limited investigation' if a trade mark used as a keyword in combination with text in an advertisment is confusing as to the origin of the advertised goods and/or services. If Google decides that it is confusing, it will prevent the advertisement from running Conduct regular checks - search for the trade mark on a number of search engine providers. This will reveal hidden uses of the trade mark as keywords (as with AdWords or metatags) as well as visible uses Beware of making unjustified threats of trade mark infringement proceedings - this can give rise to a cause of action for the advertiser who may bring a claim against the trade mark owner. Consider taking legal advice on how best to protect your brand from unauthorised on-line use. What can advertisers do? Transparency is key. Transparency in the advertisement is necessary to protect the consumer; also, the more transparent the advertisement, the less likelihood of confusion in the minds of the public and, therefore, of trade mark infringement. Advertisers should bear in mind that customers searching for a particular brand may be confused when presented with a different brand offering the same or similar goods and/or services. Provided that the advertiser ensures that customers can ascertain where the goods and/or services originate from, purchasing and bidding on third party trade-marked keywords is fair game in the on-line world. How can we help? For advice on trade mark or copyright issues please contact Laura Harper, Partner: laura.harper@shoosmiths.co.uk or 03700 865881 or Rachel Edwards, Solicitor: rachel.edwards@shoosmiths.co.uk or 03700 865792. DisclaimerThis document is for informational purposes only and does not constitute legal advice. It is recommended that specific professional advice is sought before acting on any of the information given.]]>{04D923CD-21E5-4C13-A69D-895279D08302}https://www.shoosmiths.co.uk/news/press-releases/spring-budget-2017-experts-comment-12571.aspxSpring Budget 2017 - Shoosmiths&#39; experts comment Today marked the last Spring Budget and Philip Hammond's first Budget as chancellor. Our legal experts comment on the plans unveiled around technology and connectivity, what more funding in to academia will mean for business, employment practices ('returnships' in particular), and reforms to pensions and tax. Corporate Alastair Peet, corporate partner commented on the opportunities the £270m fund for the tech industry will bring to the UK and to investors: 'The Chancellor's announcement of a £270 million fund to help develop Artificial Intelligence, biotech enterprise and driverless cars will be seen as a welcome boost by start-ups and established companies alike. The announcement can also be taken as an acknowledgement by the government that the UK has considerable talent in the tech industry that warrants sufficient support to develop it. The UK is the world leader for AI start-ups and this has been evidenced by global tech giants snapping up UK-based AI start-ups such as Microsoft buying Touchtype and Apple acquiring VocalIQ. 'It is possible this kind of fund will help to stimulate more venture capital investment too, as money for development means more opportunities for UK-based and overseas investors to invest in new platforms and products. 'This announcement gives assurance to those operating in and around tech that the government is taking seriously all of the opportunities that AI will bring, and is preparing for a more connected country in an increasingly globalised world. Tax Kate Featherstone, tax partner, comments on proposed tax reforms: 'A shake-up of the tax treatment for those who are self-employed or choose to work through a personal service company has been threatened for some time and, in his Spring Budget 2017, Phillip Hammond took steps to address the disparity between the taxation of employees and the self-employed. 'Amendments to the State Pension mean there is now little justification for the self-employed to pay less tax than the employed. While the government are keen to encourage entrepreneurialism and self-employment, they do not want tax savings to be the sole motivation for an individual to choose to be self-employed as opposed to employed. The following changes were therefore announced. The self-employed 'An increase of the main rate of Class 4 National Insurance Contributions from 9% to 10% in April 2018 (and then 11% in April 2019) increases the tax burden on self-employed individuals with profits over £16,250.' Working through a personal service company 'The tax-free dividend allowance will be reduced from £5,000 to £2,000 from April 2018. Those who provide their services through their own personal service company will, from April 2018, have to pay tax on any dividends over £2,000, thereby reducing the tax advantages of providing services in this manner.' Employment Antonia Blackwell, senior associate in the employment team, commented on the chancellor's announcement to support 'returnships': 'Today's budget has limited impact in the sphere of employment law. However, it is encouraging to see the Chancellor recognise the need for individuals to have the opportunity to retrain and upskill at all points in their life. To achieve this the Government has stated its intention to work with business groups and public sector organisations to identify how best to increase the number of returnships, supported by £5 million of new funding. Returnships offer people who have taken lengthy career breaks a clear route back to employment. In addition, as part of its commitment to ensuring public services deliver for everyone, the government has agreed to create a new £5 million centenary fund for projects to celebrate the centenary of voting rights being extended to women for the first time in 1918, such as to educate young people about its significance. Commercial TMC Joe Stephenson, senior associate in the TMC team comments on plans for the UK's digital infrastructure: 'As heavily trailed in the press, this, the final spring budget, introduces a raft of measures intended to boost Britain's public and private engagement in digital infrastructure. 'In a Budget characterised by cautious spending, the Chancellor's announcement of a £270 million fund to support development of AI, biotech enterprise and driverless cars is a clear indication of government focus on a high-tech and connected post-Brexit British economy. 'In a nod to the National Infrastructure Commission's Connected Future report, the Budget also includes details of: UK government-backed fibre and 5G trials, including preparedness across Britain's roads, railways and city centres; aggressive promises in relation to digital connectivity across the United Kingdom, including a £200 million fund for fibre broadband projects; new funding to support STEM subjects at university level, including a £300 million research fund and 1,000 new PhD places; and (predictably) promises of post Brexit openness. 'If this Budget's overriding aim is to demonstrate a Britain strong outside of the EU, the object for digital is a clear message that the United Kingdom remains open for global, tech driven business. A potentially challenging balance to strike. 'Whilst the above demonstrates a strong, tangible prioritisation of digital infrastructure concerns, it is important to interpret all spending in light of the Government's broader deficit reduction objective. As the difficulties surrounding the rural broadband role out have demonstrated, infrastructure spend can often take a backseat in times of political and economic uncertainty.' Shoosmiths commercial partner Andy Brennan, also comments on the chancellors plans to pump more funding in to academia: 'The chancellor has just announced he is allocating £300m to support the brightest research talent, including for 1,000 PhD students in STEM subjects, including maintenance loans for part time undergraduates and doctoral loans in all subjects for the first time. 'These plans signal a firm commitment to extract the very best talent the UK has got to give. It also links in with the government's wider industrial strategy, representing a further commitment to research and innovation and the knowledge economy. 'The long-term aim of giving greater access to higher education at PHD and Doctoral level is to boost the prospect of a thriving economy. Lifelong learning will help more people get higher skilled jobs and will no doubt present greater opportunities for more high growth and technology led businesses to flourish, creating benefits for all.' Pensions Paul Carney, pensions partner at Shoosmiths comments on the chancellor's crack-down tax avoidance and plans surrounding master trusts: Preventing tax avoidance 'The chancellor has announced measures which are intended to prevent tax avoidance through the use of overseas pension schemes/ arrangements. It has been possible to transfer funds from a UK pension scheme to an overseas scheme provided that that scheme is included on a government published list of qualifying recognised overseas pension scheme (QROPS). The intention is to introduce a 25% tax charge on transfers to QROPS and, the government states, the idea is to target '...those seeking to reduce the tax payable by moving their pension wealth to another jurisdiction". Exceptions apply where (let's say) there is a good (i.e. genuine) reason for the transfer so; those seeking to emigrate and take their pension monies with them to their new country should be ok.' Master trusts 'Over the last few years, there has been a growth in the number of and use of master trust pension schemes; master trusts are (as the name indicates) trust-based pension schemes constituted as multi-employer schemes for employers which are not associated with each other. The government has previously expressed concern about the regulation of such schemes and has confirmed that it will change the tax registration process for them. The intention is to make the process for the registration of master trusts consistent with the Pension Regulator's new authorisation and supervision regime.' Wed, 08 Mar 2017 00:00:00 Z<![CDATA[ Today marked the last Spring Budget and Philip Hammond's first Budget as chancellor. Our legal experts comment on the plans unveiled around technology and connectivity, what more funding in to academia will mean for business, employment practices ('returnships' in particular), and reforms to pensions and tax. Corporate Alastair Peet, corporate partner commented on the opportunities the £270m fund for the tech industry will bring to the UK and to investors: 'The Chancellor's announcement of a £270 million fund to help develop Artificial Intelligence, biotech enterprise and driverless cars will be seen as a welcome boost by start-ups and established companies alike. The announcement can also be taken as an acknowledgement by the government that the UK has considerable talent in the tech industry that warrants sufficient support to develop it. The UK is the world leader for AI start-ups and this has been evidenced by global tech giants snapping up UK-based AI start-ups such as Microsoft buying Touchtype and Apple acquiring VocalIQ. 'It is possible this kind of fund will help to stimulate more venture capital investment too, as money for development means more opportunities for UK-based and overseas investors to invest in new platforms and products. 'This announcement gives assurance to those operating in and around tech that the government is taking seriously all of the opportunities that AI will bring, and is preparing for a more connected country in an increasingly globalised world. Tax Kate Featherstone, tax partner, comments on proposed tax reforms: 'A shake-up of the tax treatment for those who are self-employed or choose to work through a personal service company has been threatened for some time and, in his Spring Budget 2017, Phillip Hammond took steps to address the disparity between the taxation of employees and the self-employed. 'Amendments to the State Pension mean there is now little justification for the self-employed to pay less tax than the employed. While the government are keen to encourage entrepreneurialism and self-employment, they do not want tax savings to be the sole motivation for an individual to choose to be self-employed as opposed to employed. The following changes were therefore announced. The self-employed 'An increase of the main rate of Class 4 National Insurance Contributions from 9% to 10% in April 2018 (and then 11% in April 2019) increases the tax burden on self-employed individuals with profits over £16,250.' Working through a personal service company 'The tax-free dividend allowance will be reduced from £5,000 to £2,000 from April 2018. Those who provide their services through their own personal service company will, from April 2018, have to pay tax on any dividends over £2,000, thereby reducing the tax advantages of providing services in this manner.' Employment Antonia Blackwell, senior associate in the employment team, commented on the chancellor's announcement to support 'returnships': 'Today's budget has limited impact in the sphere of employment law. However, it is encouraging to see the Chancellor recognise the need for individuals to have the opportunity to retrain and upskill at all points in their life. To achieve this the Government has stated its intention to work with business groups and public sector organisations to identify how best to increase the number of returnships, supported by £5 million of new funding. Returnships offer people who have taken lengthy career breaks a clear route back to employment. In addition, as part of its commitment to ensuring public services deliver for everyone, the government has agreed to create a new £5 million centenary fund for projects to celebrate the centenary of voting rights being extended to women for the first time in 1918, such as to educate young people about its significance. Commercial TMC Joe Stephenson, senior associate in the TMC team comments on plans for the UK's digital infrastructure: 'As heavily trailed in the press, this, the final spring budget, introduces a raft of measures intended to boost Britain's public and private engagement in digital infrastructure. 'In a Budget characterised by cautious spending, the Chancellor's announcement of a £270 million fund to support development of AI, biotech enterprise and driverless cars is a clear indication of government focus on a high-tech and connected post-Brexit British economy. 'In a nod to the National Infrastructure Commission's Connected Future report, the Budget also includes details of: UK government-backed fibre and 5G trials, including preparedness across Britain's roads, railways and city centres; aggressive promises in relation to digital connectivity across the United Kingdom, including a £200 million fund for fibre broadband projects; new funding to support STEM subjects at university level, including a £300 million research fund and 1,000 new PhD places; and (predictably) promises of post Brexit openness. 'If this Budget's overriding aim is to demonstrate a Britain strong outside of the EU, the object for digital is a clear message that the United Kingdom remains open for global, tech driven business. A potentially challenging balance to strike. 'Whilst the above demonstrates a strong, tangible prioritisation of digital infrastructure concerns, it is important to interpret all spending in light of the Government's broader deficit reduction objective. As the difficulties surrounding the rural broadband role out have demonstrated, infrastructure spend can often take a backseat in times of political and economic uncertainty.' Shoosmiths commercial partner Andy Brennan, also comments on the chancellors plans to pump more funding in to academia: 'The chancellor has just announced he is allocating £300m to support the brightest research talent, including for 1,000 PhD students in STEM subjects, including maintenance loans for part time undergraduates and doctoral loans in all subjects for the first time. 'These plans signal a firm commitment to extract the very best talent the UK has got to give. It also links in with the government's wider industrial strategy, representing a further commitment to research and innovation and the knowledge economy. 'The long-term aim of giving greater access to higher education at PHD and Doctoral level is to boost the prospect of a thriving economy. Lifelong learning will help more people get higher skilled jobs and will no doubt present greater opportunities for more high growth and technology led businesses to flourish, creating benefits for all.' Pensions Paul Carney, pensions partner at Shoosmiths comments on the chancellor's crack-down tax avoidance and plans surrounding master trusts: Preventing tax avoidance 'The chancellor has announced measures which are intended to prevent tax avoidance through the use of overseas pension schemes/ arrangements. It has been possible to transfer funds from a UK pension scheme to an overseas scheme provided that that scheme is included on a government published list of qualifying recognised overseas pension scheme (QROPS). The intention is to introduce a 25% tax charge on transfers to QROPS and, the government states, the idea is to target '...those seeking to reduce the tax payable by moving their pension wealth to another jurisdiction". Exceptions apply where (let's say) there is a good (i.e. genuine) reason for the transfer so; those seeking to emigrate and take their pension monies with them to their new country should be ok.' Master trusts 'Over the last few years, there has been a growth in the number of and use of master trust pension schemes; master trusts are (as the name indicates) trust-based pension schemes constituted as multi-employer schemes for employers which are not associated with each other. The government has previously expressed concern about the regulation of such schemes and has confirmed that it will change the tax registration process for them. The intention is to make the process for the registration of master trusts consistent with the Pension Regulator's new authorisation and supervision regime.' ]]>{33D19B02-75A1-4D81-B495-B41413060343}https://www.shoosmiths.co.uk/client-resources/legal-updates/who-owns-what-when-it-comes-to-intellectual-property-12423.aspxEmployers, employees and consultants - who owns what when it comes to intellectual property? All companies require certainty as to the ownership of the intellectual property created by their employees and consultants. Understanding the intellectual property portfolio of a company is critical for any board. This is because the effective management and use of company intellectual property will be an integral part of the business strategy of most organisations. Knowledge of intellectual property creation and ownership is particularly relevant to those businesses which develop new products and processes. It is also important for software developers and those businesses which operate in the creative industries and innovation sectors: from communications and retail businesses to manufacturing and technology companies. Remind me - what is intellectual property? Intellectual property (IP) refers to the collection of rights which protect creations of the mind, for example inventions, literary and artistic works, designs, names, music and images. They are broadly divided into the following categories: patents for inventions, trade marks for names, registered and unregistered design rights for industrial designs; and copyright which covers artistic and literary works (including software) films, music, and ancillary rights including performance and rental rights. First ownership - the general rule The general rule in relation to IP created by an employee during the course of their employment is that, in the absence of agreement to the contrary, the first owner is the employer. This position arises pursuant to the relevant statutes governing that particular area of intellectual property. For example, in the case of inventive products and processes, the Patents Act 1977 confers first ownership of an invention created by an employee to the employer. In relation to copyright works and registered and unregistered design rights (copyright works being literary, musical, dramatic and artistic works), the Copyright Designs and Patents Act 1988, the Registered Designs Act 1949 and the Regulation on Community Designs (6/2002/EC) all operate to confer ownership of copyright works and UK and EU designs created by an employee to the employer. Similarly, the first owner of database rights in a database will be the employer pursuant to the Copyright, Rights in Databases Regulations 1997. If the employer owns all intellectual property rights automatically be virtue of statutes do I still need intellectual property provisions in my contracts of employment? Yes, whilst first ownership of the invention, copyright work, design or database will usually vest in the employer, the statutes do not expressly deal with non-economic rights such as, in the case of copyright, moral rights which are personal to the employee. Moral rights exist pursuant to the Copyright Designs and Patents Act and sit alongside copyright. They protect the integrity and ownership of the work. Unlike the economic rights which exist in copyright protection (for example, the right of reproduction, distribution, rental and licensing, public performance, communication to the public and adaptation) moral rights cannot be transferred. Moral rights include the right to be recognised as the author of the work (paternity right), the right to object to the derogatory treatment of the work (this would broadly include any unauthorised editing and adaptation of the work), the right to object to false attribution of the work, and the right not to be identified or named as the author of a work which they did not create. In a commercial context, if these moral rights are not waived (usually in appropriately drafted clauses in the contract of employment), then the employee may have the right to be named as author on all copies of the work, and crucially, the right to object to any editing or adaptation of the work. The potential implications for an employer if the employee were to successfully enforce such moral rights could be significant as the employee could prevent the employer from effectively dealing with those rights. Also, standard contracts of employment do not provide for specific IP focussed roles and therefore, bespoke terms should be included to ensure that both the employer and employee are clear on what intellectual property is required from the engagement and how that will be owned Has the employee created the work during the course of their employment? In order for the intellectual property to vest in the employer, generally the creator must be an employee i.e. 'must be engaged under a contract of employment' and the work must have been created 'during the course of that employment.' Therefore, it is very important to clearly define the scope of the employee's engagement and the terms of their employment in their contract to avoid any potential dispute concerning whether a work was created during the course of the employment. Clarity can be achieved by expressly setting out the scope of their job description in their contract of employment. For example, stating that their job description includes inventing and/or improving on products and processes or producing certain designs, text or plans. Furthermore, the terms of the intellectual property clauses in employment contracts should also include an obligation to disclose any intellectual property including inventions to the employer immediately upon creation so that the employer is aware of what intellectual property has been created and by whom in order to be able to effectively protect and commercially exploit the same. It is also important to deal with the assignment of future rights as far as the relevant legislation permits. For example in an employer/employee relationship, a present assignment of future copyright is permissible however a present assignment of future inventions is not(contrast with the position under a consultancy agreement which would enable a present assignment of a future inventions). Work created during the course of employment - a question of fact Most IP disputes which arise between an employer and an employee hinge on whether the intellectual property in question has been created 'during the course of employment'. This is determined by a number of factors including whether the work falls within the job description of the employee, whether the work was created during working hours, whether the employee could have reasonably been expected to create the work and whether any agreement exists relating to the work between the employer and the employee. However, it is useful to note that just because a work is created during working hours does not necessarily mean that the intellectual property in that work is owned by the employer (though this may give rise to a disciplinary procedures for misuse of company time, computer equipment etc). Similarly, if work is produced outside working hours but falls squarely within the job description of the employee then it may be that the first owner of that intellectual property in the product of that work is the employer, notwithstanding the fact that the work was created, for example, in the evening. Employers should also be aware that under the provisions of the Patents Act, they may be obliged to pay additional compensation for inventions created by employees which have an "outstanding benefit" to the employer provided that payment of such compensation would be 'just'. Outstanding benefit is defined as more than a benefit which is substantial, significant or good. 'Benefit' is something in addition to that which the employer would usually expect to arise from the employee's duties. First ownership - consultants As a consultant is an independent party then unless otherwise agreed, all IP created by a consultant will be owned by them and not the company engaging the consultant. Therefore, it is important that companies ensure that an appropriate consultancy agreement is entered into between the company and the consultant. The agreement should clearly state the terms of the engagement including key terms such as: remuneration, timeframes, project scope, appropriate indemnities, services and deliverables and a provision which expressly states that the intellectual property in the deliverables and the services will transfer to the company immediately upon creation. A written agreement is particularly important as whilst an assignment or licence of intellectual property created by a consultant may be implied when 'it is reasonable, equitable and necessary for business efficacy' and 'the terms are obvious and capable of clear expression and do not contradict any express terms', such assignments and licences are rare. Hence the preference for written agreements and specific terms relating to IP ownership. Intellectual property is an important asset of any company. Given the instances of employees embarking on second jobs or projects outside their employment (particularly in the case of software developers, digital and creative professionals,) the necessity to clearly define job descriptions and terms of employment is increasingly important to effectively police, protect and effectively valuable intellectual property produced for the business. For further information on the above or any other intellectual property enquiries please contact Laura Harper, Partner, on 0161 954 5881 (extension 5881) or at laura.harper@shoosmiths.co.uk. DisclaimerThis document is for informational purposes only and does not constitute legal advice. It is recommended that specific professional advice is sought before acting on any of the information given.Wed, 01 Feb 2017 00:00:00 Z<![CDATA[Laura Harper ]]><![CDATA[ All companies require certainty as to the ownership of the intellectual property created by their employees and consultants. Understanding the intellectual property portfolio of a company is critical for any board. This is because the effective management and use of company intellectual property will be an integral part of the business strategy of most organisations. Knowledge of intellectual property creation and ownership is particularly relevant to those businesses which develop new products and processes. It is also important for software developers and those businesses which operate in the creative industries and innovation sectors: from communications and retail businesses to manufacturing and technology companies. Remind me - what is intellectual property? Intellectual property (IP) refers to the collection of rights which protect creations of the mind, for example inventions, literary and artistic works, designs, names, music and images. They are broadly divided into the following categories: patents for inventions, trade marks for names, registered and unregistered design rights for industrial designs; and copyright which covers artistic and literary works (including software) films, music, and ancillary rights including performance and rental rights. First ownership - the general rule The general rule in relation to IP created by an employee during the course of their employment is that, in the absence of agreement to the contrary, the first owner is the employer. This position arises pursuant to the relevant statutes governing that particular area of intellectual property. For example, in the case of inventive products and processes, the Patents Act 1977 confers first ownership of an invention created by an employee to the employer. In relation to copyright works and registered and unregistered design rights (copyright works being literary, musical, dramatic and artistic works), the Copyright Designs and Patents Act 1988, the Registered Designs Act 1949 and the Regulation on Community Designs (6/2002/EC) all operate to confer ownership of copyright works and UK and EU designs created by an employee to the employer. Similarly, the first owner of database rights in a database will be the employer pursuant to the Copyright, Rights in Databases Regulations 1997. If the employer owns all intellectual property rights automatically be virtue of statutes do I still need intellectual property provisions in my contracts of employment? Yes, whilst first ownership of the invention, copyright work, design or database will usually vest in the employer, the statutes do not expressly deal with non-economic rights such as, in the case of copyright, moral rights which are personal to the employee. Moral rights exist pursuant to the Copyright Designs and Patents Act and sit alongside copyright. They protect the integrity and ownership of the work. Unlike the economic rights which exist in copyright protection (for example, the right of reproduction, distribution, rental and licensing, public performance, communication to the public and adaptation) moral rights cannot be transferred. Moral rights include the right to be recognised as the author of the work (paternity right), the right to object to the derogatory treatment of the work (this would broadly include any unauthorised editing and adaptation of the work), the right to object to false attribution of the work, and the right not to be identified or named as the author of a work which they did not create. In a commercial context, if these moral rights are not waived (usually in appropriately drafted clauses in the contract of employment), then the employee may have the right to be named as author on all copies of the work, and crucially, the right to object to any editing or adaptation of the work. The potential implications for an employer if the employee were to successfully enforce such moral rights could be significant as the employee could prevent the employer from effectively dealing with those rights. Also, standard contracts of employment do not provide for specific IP focussed roles and therefore, bespoke terms should be included to ensure that both the employer and employee are clear on what intellectual property is required from the engagement and how that will be owned Has the employee created the work during the course of their employment? In order for the intellectual property to vest in the employer, generally the creator must be an employee i.e. 'must be engaged under a contract of employment' and the work must have been created 'during the course of that employment.' Therefore, it is very important to clearly define the scope of the employee's engagement and the terms of their employment in their contract to avoid any potential dispute concerning whether a work was created during the course of the employment. Clarity can be achieved by expressly setting out the scope of their job description in their contract of employment. For example, stating that their job description includes inventing and/or improving on products and processes or producing certain designs, text or plans. Furthermore, the terms of the intellectual property clauses in employment contracts should also include an obligation to disclose any intellectual property including inventions to the employer immediately upon creation so that the employer is aware of what intellectual property has been created and by whom in order to be able to effectively protect and commercially exploit the same. It is also important to deal with the assignment of future rights as far as the relevant legislation permits. For example in an employer/employee relationship, a present assignment of future copyright is permissible however a present assignment of future inventions is not(contrast with the position under a consultancy agreement which would enable a present assignment of a future inventions). Work created during the course of employment - a question of fact Most IP disputes which arise between an employer and an employee hinge on whether the intellectual property in question has been created 'during the course of employment'. This is determined by a number of factors including whether the work falls within the job description of the employee, whether the work was created during working hours, whether the employee could have reasonably been expected to create the work and whether any agreement exists relating to the work between the employer and the employee. However, it is useful to note that just because a work is created during working hours does not necessarily mean that the intellectual property in that work is owned by the employer (though this may give rise to a disciplinary procedures for misuse of company time, computer equipment etc). Similarly, if work is produced outside working hours but falls squarely within the job description of the employee then it may be that the first owner of that intellectual property in the product of that work is the employer, notwithstanding the fact that the work was created, for example, in the evening. Employers should also be aware that under the provisions of the Patents Act, they may be obliged to pay additional compensation for inventions created by employees which have an "outstanding benefit" to the employer provided that payment of such compensation would be 'just'. Outstanding benefit is defined as more than a benefit which is substantial, significant or good. 'Benefit' is something in addition to that which the employer would usually expect to arise from the employee's duties. First ownership - consultants As a consultant is an independent party then unless otherwise agreed, all IP created by a consultant will be owned by them and not the company engaging the consultant. Therefore, it is important that companies ensure that an appropriate consultancy agreement is entered into between the company and the consultant. The agreement should clearly state the terms of the engagement including key terms such as: remuneration, timeframes, project scope, appropriate indemnities, services and deliverables and a provision which expressly states that the intellectual property in the deliverables and the services will transfer to the company immediately upon creation. A written agreement is particularly important as whilst an assignment or licence of intellectual property created by a consultant may be implied when 'it is reasonable, equitable and necessary for business efficacy' and 'the terms are obvious and capable of clear expression and do not contradict any express terms', such assignments and licences are rare. Hence the preference for written agreements and specific terms relating to IP ownership. Intellectual property is an important asset of any company. Given the instances of employees embarking on second jobs or projects outside their employment (particularly in the case of software developers, digital and creative professionals,) the necessity to clearly define job descriptions and terms of employment is increasingly important to effectively police, protect and effectively valuable intellectual property produced for the business. For further information on the above or any other intellectual property enquiries please contact Laura Harper, Partner, on 0161 954 5881 (extension 5881) or at laura.harper@shoosmiths.co.uk. DisclaimerThis document is for informational purposes only and does not constitute legal advice. It is recommended that specific professional advice is sought before acting on any of the information given.]]>{D092D3C5-3EBC-4127-A8E6-DEA6B064C38C}https://www.shoosmiths.co.uk/client-resources/legal-updates/mccartney-battles-to-reclaim-copyright-in-beatles-songs-12412.aspxMcCartney battles to reclaim copyright in Beatles&#39; songs On 18th January 2017, Sir Paul McCartney filed a claim in the US against Sony/ATV Music Publishing LLC ('Sony') for a declaratory judgement. If successful it will clear the way for him to reclaim his US copyright in a number of songs which he wrote or co-wrote with John Lennon. Why did he do this? This case has arisen from the provisions of the US Copyright Act 1976 (the Act) which gives artists the right to reclaim ownership of the copyright in works assigned by them prior to 1978. The Act states that an artist may terminate all agreements for the grant, licence or transfer of US copyright entered into prior to 1978 by serving notice upon the assignee or licensee 56 to 61 years after the date on which the copyright was originally secured. Therefore, Mr McCartney should be able to reclaim ownership of his US copyright in the Beatles songs in question as they were written between 1962 and 1971. The oldest songs in the Sony portfolio could be eligible for this process in 2018. In this case, Mr McCartney is asking the court to declare that in invoking the provisions of the Act and reclaiming the copyright in the Beatles songs, he will not be in breach of the terms of his publishing agreement. Will he be successful? Many big names in the music industry have successfully taken back ownership of their rights in the US by relying on this statutory provision. However, recently, the band Duran Duran sought to rely on the Act in a claim bought against Sony at the High Court of Justice in England. The band wanted to reclaim rights in thirty seven of their songs. The claim failed, broadly due to a lack of evidence that the Act would override the terms of their publishing agreement with Sony which was governed by English law. It appears that Paul McCartney is seeking a declaratory judgement from the US court to clarify the position that his publishing rights will revert to him pursuant to the provisions of the Act and dispel any ambiguity. What does this mean for British artists and publishers? This case is a reminder that: for publishing companies, it's essential that the publishing agreement is sufficiently detailed and properly drafted to deal with the effect of various copyright laws around the world; for artists and bands, it's important that they receive specialist legal advice on the terms of their publishing agreements and their long term implications; and the recent Duran Duran v Sony case arguably confuses the position for British songwriters as it creates a situation where a US court could decide that US rights revert to the artist under the provisions of the Act, but an English court could find that this reversion constituted a breach of the publishing agreement, giving rise to a claim for damages for breach of contract against the artist. How can we help? For advice on copyright and intellectual property issues please contact Laura Harper, Partner: laura.harper@shoosmiths.co.uk or 03700 865881 or Rachel Edwards, Solicitor: rachel.edwards@shoosmiths.co.uk or 03700 865792. DisclaimerThis document is for informational purposes only and does not constitute legal advice. It is recommended that specific professional advice is sought before acting on any of the information given.Fri, 27 Jan 2017 00:00:00 Z<![CDATA[Laura Harper ]]><![CDATA[ On 18th January 2017, Sir Paul McCartney filed a claim in the US against Sony/ATV Music Publishing LLC ('Sony') for a declaratory judgement. If successful it will clear the way for him to reclaim his US copyright in a number of songs which he wrote or co-wrote with John Lennon. Why did he do this? This case has arisen from the provisions of the US Copyright Act 1976 (the Act) which gives artists the right to reclaim ownership of the copyright in works assigned by them prior to 1978. The Act states that an artist may terminate all agreements for the grant, licence or transfer of US copyright entered into prior to 1978 by serving notice upon the assignee or licensee 56 to 61 years after the date on which the copyright was originally secured. Therefore, Mr McCartney should be able to reclaim ownership of his US copyright in the Beatles songs in question as they were written between 1962 and 1971. The oldest songs in the Sony portfolio could be eligible for this process in 2018. In this case, Mr McCartney is asking the court to declare that in invoking the provisions of the Act and reclaiming the copyright in the Beatles songs, he will not be in breach of the terms of his publishing agreement. Will he be successful? Many big names in the music industry have successfully taken back ownership of their rights in the US by relying on this statutory provision. However, recently, the band Duran Duran sought to rely on the Act in a claim bought against Sony at the High Court of Justice in England. The band wanted to reclaim rights in thirty seven of their songs. The claim failed, broadly due to a lack of evidence that the Act would override the terms of their publishing agreement with Sony which was governed by English law. It appears that Paul McCartney is seeking a declaratory judgement from the US court to clarify the position that his publishing rights will revert to him pursuant to the provisions of the Act and dispel any ambiguity. What does this mean for British artists and publishers? This case is a reminder that: for publishing companies, it's essential that the publishing agreement is sufficiently detailed and properly drafted to deal with the effect of various copyright laws around the world; for artists and bands, it's important that they receive specialist legal advice on the terms of their publishing agreements and their long term implications; and the recent Duran Duran v Sony case arguably confuses the position for British songwriters as it creates a situation where a US court could decide that US rights revert to the artist under the provisions of the Act, but an English court could find that this reversion constituted a breach of the publishing agreement, giving rise to a claim for damages for breach of contract against the artist. How can we help? For advice on copyright and intellectual property issues please contact Laura Harper, Partner: laura.harper@shoosmiths.co.uk or 03700 865881 or Rachel Edwards, Solicitor: rachel.edwards@shoosmiths.co.uk or 03700 865792. DisclaimerThis document is for informational purposes only and does not constitute legal advice. It is recommended that specific professional advice is sought before acting on any of the information given.]]>{E6730C4E-2932-4B6E-BB97-FCB6920C1B3B}https://www.shoosmiths.co.uk/client-resources/legal-updates/real-estate-and-unreal-estate-11945.aspxReal estate and unreal estate This article looks at why intellectual property is key to construction and property development.Thu, 06 Oct 2016 00:00:00 +0100<![CDATA[Laura Harper ]]><![CDATA[ This article looks at why intellectual property is key to construction and property development.]]>{0C3927BF-C6A8-4977-B426-8A012C5DC2A1}https://www.shoosmiths.co.uk/client-resources/legal-updates/shouldve-wouldve-couldve-11924.aspxShould&#39;ve, would&#39;ve, could&#39;ve Last month, Specsavers secured acceptance for the sign SHOULD'VE as a registered trade mark in the UK following an unexpected decision by the UK Intellectual Property Office. The result of this decision awards Specsavers the ability to prevent use of the signs SHOULD'VE and SHOULDVE in relation to a range of goods and services. On paper, the signs do not fulfil the registrability requirement of being able to distinguish one entity's goods and services from those of another - a generic or non-distinctive sign cannot be registered, as such terms should be available for use by all traders. A trader can overcome this inherent non-distinctiveness if it can establish that the sign has become distinctive through use, such that the public associates the sign with their goods and services. Specsavers filed significant evidence of continued, targeted and wide-spread use of the signs SHOULD'VE and SHOULDVE in the marketplace, including evidence of the advertising campaign slogan 'should've gone to Specsavers'. In attempting to demonstrate the acquired distinctiveness of the signs, Specsavers needed to demonstrate that the public associates the signs with their goods and services without any additional matter. As such, evidence demonstrating use of the signs in the slogan 'should've gone to Specsavers' alone should have been supported by evidence of distinctiveness in the signs SHOULD'VE and SHOULDVE apart from that slogan. Nestle had a similar situation in seeking registration for the sign HAVE A BREAK, which was initially refused on the basis that the evidence of use was deemed insufficient to establish acquired distinctiveness of the sign HAVE A BREAK alone, when used separately from the remainder of the slogan, HAVE A KIT KAT. Whilst Nestle ultimately secured registration for the sign HAVE A BREAK, the case demonstrated the difficulties in securing protection for slogans given their inherent nature as promotional statements rather than indicators of origin. It is very surprising, therefore, that Specsavers has apparently demonstrated acquired distinctiveness in a single generic word alone, and one wonders how long it will take before a third party files an invalidity action. Considerations on distinctiveness Creative and invented words and logos make the best trade marks, and are most likely to be acceptable for registration. Trade marks that are either generic or descriptive of goods have a much lower chance of registration it is possible to secure registration for a non-distinctive sign, but only by demonstrating that it has acquired distinctiveness - extensive use of the sign alone will be required to achieve registration ensure you keep records of widespread use of the sign, including advertising and marketing material, packaging, labelling, and records regarding income and expenditure under the sign consider whether any of your previously generic signs may now have acquired distinctiveness, and are therefore eligible for registration Shoosmiths has a dedicated Intellectual Property team comprising both trade mark attorneys and solicitors, who can advise and assist you with all aspects of trade mark strategy and protection, including pre-filing advice, filing and securing registrations, portfolio reviews, and handling third party contentious work. This article was first published in the Greater Birmingham Chamber of Commerce Magazine. DisclaimerThis document is for informational purposes only and does not constitute legal advice. It is recommended that specific professional advice is sought before acting on any of the information given. Mon, 03 Oct 2016 00:00:00 +0100<![CDATA[ Last month, Specsavers secured acceptance for the sign SHOULD'VE as a registered trade mark in the UK following an unexpected decision by the UK Intellectual Property Office. The result of this decision awards Specsavers the ability to prevent use of the signs SHOULD'VE and SHOULDVE in relation to a range of goods and services. On paper, the signs do not fulfil the registrability requirement of being able to distinguish one entity's goods and services from those of another - a generic or non-distinctive sign cannot be registered, as such terms should be available for use by all traders. A trader can overcome this inherent non-distinctiveness if it can establish that the sign has become distinctive through use, such that the public associates the sign with their goods and services. Specsavers filed significant evidence of continued, targeted and wide-spread use of the signs SHOULD'VE and SHOULDVE in the marketplace, including evidence of the advertising campaign slogan 'should've gone to Specsavers'. In attempting to demonstrate the acquired distinctiveness of the signs, Specsavers needed to demonstrate that the public associates the signs with their goods and services without any additional matter. As such, evidence demonstrating use of the signs in the slogan 'should've gone to Specsavers' alone should have been supported by evidence of distinctiveness in the signs SHOULD'VE and SHOULDVE apart from that slogan. Nestle had a similar situation in seeking registration for the sign HAVE A BREAK, which was initially refused on the basis that the evidence of use was deemed insufficient to establish acquired distinctiveness of the sign HAVE A BREAK alone, when used separately from the remainder of the slogan, HAVE A KIT KAT. Whilst Nestle ultimately secured registration for the sign HAVE A BREAK, the case demonstrated the difficulties in securing protection for slogans given their inherent nature as promotional statements rather than indicators of origin. It is very surprising, therefore, that Specsavers has apparently demonstrated acquired distinctiveness in a single generic word alone, and one wonders how long it will take before a third party files an invalidity action. Considerations on distinctiveness Creative and invented words and logos make the best trade marks, and are most likely to be acceptable for registration. Trade marks that are either generic or descriptive of goods have a much lower chance of registration it is possible to secure registration for a non-distinctive sign, but only by demonstrating that it has acquired distinctiveness - extensive use of the sign alone will be required to achieve registration ensure you keep records of widespread use of the sign, including advertising and marketing material, packaging, labelling, and records regarding income and expenditure under the sign consider whether any of your previously generic signs may now have acquired distinctiveness, and are therefore eligible for registration Shoosmiths has a dedicated Intellectual Property team comprising both trade mark attorneys and solicitors, who can advise and assist you with all aspects of trade mark strategy and protection, including pre-filing advice, filing and securing registrations, portfolio reviews, and handling third party contentious work. This article was first published in the Greater Birmingham Chamber of Commerce Magazine. DisclaimerThis document is for informational purposes only and does not constitute legal advice. It is recommended that specific professional advice is sought before acting on any of the information given. ]]>{3CB6672B-B5BC-4E5C-9567-1E7D878182F6}https://www.shoosmiths.co.uk/client-resources/legal-updates/designers-beware-you-can-lose-the-right-your-name-11726.aspxDesigners beware - you can lose the right to use your own name The most recent example of a fashion designer losing the right to use his/her name came about this week. Karen Millen lost her court battle to challenge the agreement reached after the sale of her business to Baugur for £95m in 2004 which stated that she could not use her name in business in the future. Even her offer of using her name in a different sector was rejected by the court as it felt there would be too much confusion between the current fashion brand and whatever new business Ms Millen set up. This case follows a long line of identical cases where the designer has been unable to overturn a clause in a sale agreement stating they cannot use their name in business in the future. This includes Elizabeth Emannuel (the wedding dress designer for Princess Diana), Jil Sander, Thierry Mugler, Joseph Abboud and many others. So why is this the case? Basically, it is because the designers names have become linked to the goodwill of the business. For example, when you mention Jimmy Choo or Christian Louboutin do you think of the individual or their luxury footwear? When it then comes to selling the business the buyer wants to ensure that it is getting all of the goodwill (and any intellectual property) in the business and will normally require the designer to agree not to use his/her name in the future. In Karen Millen's case she sold her business for £95m - is that enough to agree not to use your name again? Remember when agreeing such a clause it does not mean that you cannot work again or that you cannot design again. It just means you cannot do either under your own name. You can therefore become a Creative or Design Director at an established brand or set up a new company under a different name like Roland Mouret when he used 'RM by Roland Mouret' after he sold his business. What advice is there for fashion designers? When starting out most fashion designers either go in-house with an established brand or set up on their own. In the former case, it is important not to let your name be used as a trade mark for your designs by your employer as it is likely they will own the rights to your name. Instead see what Tom Ford or Sarah Burton have done. Tom Ford was creative director at Gucci but never let his name be used for any of his designs. This left the door open for him to leave Gucci and set up the Tom Ford empire using his own name. Sarah Burton of Alexander McQueen - best known for designing the Duchess Of Cambridge's wedding dress - also has not allowed her name to be used while at McQueen and will have the same flexibility as Tom Ford whenever she leaves. When setting up on your own, the designer has two choices about the name of the business. Either pick a unique name or use your own name. Obviously, when choosing an unique name that is all you lose when selling the business. If the designer decides to use his/her own name then we suggest that they register it as a trade mark but with themselves as the owner not their company. The reason for this is that when a buyer comes along they will notice that the trade mark is not part of the assets of the company and will ask for it to be transferred. It is at this time that the designer has the opportunity to consider 'is the amount being offered enough not to be able to use my name again in business?'. Of course, depending upon the amount of the investment and the investor it is possible for the designer to negotiate when he/she might be able to use his/her name in the future e.g. in a different sector or maybe as a similar brand e.g. RM by Roland Mouret. However difficult this issue may seem at the time it comes down to the question of how much is it worth never to be able to use your own name again in business? DisclaimerThis document is for informational purposes only and does not constitute legal advice. It is recommended that specific professional advice is sought before acting on any of the information given. Thu, 18 Aug 2016 00:00:00 +0100<![CDATA[Gary Assim ]]><![CDATA[ The most recent example of a fashion designer losing the right to use his/her name came about this week. Karen Millen lost her court battle to challenge the agreement reached after the sale of her business to Baugur for £95m in 2004 which stated that she could not use her name in business in the future. Even her offer of using her name in a different sector was rejected by the court as it felt there would be too much confusion between the current fashion brand and whatever new business Ms Millen set up. This case follows a long line of identical cases where the designer has been unable to overturn a clause in a sale agreement stating they cannot use their name in business in the future. This includes Elizabeth Emannuel (the wedding dress designer for Princess Diana), Jil Sander, Thierry Mugler, Joseph Abboud and many others. So why is this the case? Basically, it is because the designers names have become linked to the goodwill of the business. For example, when you mention Jimmy Choo or Christian Louboutin do you think of the individual or their luxury footwear? When it then comes to selling the business the buyer wants to ensure that it is getting all of the goodwill (and any intellectual property) in the business and will normally require the designer to agree not to use his/her name in the future. In Karen Millen's case she sold her business for £95m - is that enough to agree not to use your name again? Remember when agreeing such a clause it does not mean that you cannot work again or that you cannot design again. It just means you cannot do either under your own name. You can therefore become a Creative or Design Director at an established brand or set up a new company under a different name like Roland Mouret when he used 'RM by Roland Mouret' after he sold his business. What advice is there for fashion designers? When starting out most fashion designers either go in-house with an established brand or set up on their own. In the former case, it is important not to let your name be used as a trade mark for your designs by your employer as it is likely they will own the rights to your name. Instead see what Tom Ford or Sarah Burton have done. Tom Ford was creative director at Gucci but never let his name be used for any of his designs. This left the door open for him to leave Gucci and set up the Tom Ford empire using his own name. Sarah Burton of Alexander McQueen - best known for designing the Duchess Of Cambridge's wedding dress - also has not allowed her name to be used while at McQueen and will have the same flexibility as Tom Ford whenever she leaves. When setting up on your own, the designer has two choices about the name of the business. Either pick a unique name or use your own name. Obviously, when choosing an unique name that is all you lose when selling the business. If the designer decides to use his/her own name then we suggest that they register it as a trade mark but with themselves as the owner not their company. The reason for this is that when a buyer comes along they will notice that the trade mark is not part of the assets of the company and will ask for it to be transferred. It is at this time that the designer has the opportunity to consider 'is the amount being offered enough not to be able to use my name again in business?'. Of course, depending upon the amount of the investment and the investor it is possible for the designer to negotiate when he/she might be able to use his/her name in the future e.g. in a different sector or maybe as a similar brand e.g. RM by Roland Mouret. However difficult this issue may seem at the time it comes down to the question of how much is it worth never to be able to use your own name again in business? DisclaimerThis document is for informational purposes only and does not constitute legal advice. It is recommended that specific professional advice is sought before acting on any of the information given. ]]>{0F7B5398-B65B-486C-A5F0-DCBF04BA48A7}https://www.shoosmiths.co.uk/client-resources/legal-updates/brexit-eu-trade-marks-effectively-manage-them-11561.aspxBrand owners and Brexit: Changes to the EU trade mark system and how to effectively manage them The result of the EU Referendum or 'Brexit' has naturally left Intellectual Property (IP) rights holders concerned and confused over their current and future position. The current state of play - a brief history Given that the withdrawal of the UK from the EU will have no effect on its membership of the European Patent Organisation, and as such, will have no real impact on patent protection in Europe and the UK, it is of course brand owners who will be most affected by Brexit. But this is not the first time in recent years that brand owners have experienced change in their European protection. In the last few years, brand owners have seen a considerable shake-up of the EU Trade Mark Registration system, with a recent European decision removing territorial borders in the consideration of what constitutes 'genuine use' of a European Trade Mark. The effect for brand owners has been that the long held principal of unitary character - that European Trade Mark Registrations are valid throughout the EU provided use has been made in at least one member state of the EU - has essentially been blown out of the water, potentially leaving EU Registrations vulnerable to cancellation actions. Shortly afterwards, brand owners faced the introduction of the new EU Regulations brought into force in March of this year. The effect on brand owners has been that many European Trade Marks became vulnerable to a narrowed scope of protection through amendments to the treatment of class headings within specifications. Now brand owners have Brexit. The effect for brand owners is unknown at this time. Not the first time So Brexit is not the first time that European Trade Mark rights have been called into question, and it is unlikely to be the last. IP law is ever-changing and savvy brand owners should be constantly reviewing their IP portfolios to ensure they are adequately protected. Whilst we do not yet know what transitional provisions will be put into place for European IP rights holders following Brexit, it is difficult to foresee a future in which no transitional provisions at all are adopted. Let's not forget that this is an issue facing all European Trade Mark Rights holders, not just those rights holders based in the UK. A situation where large corporations from the other great commercial powerhouses of the world - the US, Japan, China, to name but a few - potentially losing over 20 years' worth of IP protection at an economically sensitive and commercially unstable time, when the UK needs to strengthen, not weaken, those international ties, is likely to be as unthinkable for the UK government as it is for the IP rights holders themselves. Therefore, whilst we cannot say for sure, the more likely future and one much easier to imagine, is one in which transitional provisions are put into place allowing the continuation of protection in the UK via some form of conversion of those European rights to national UK rights. Whether this will be a rubber stamping exercise by the UKIPO, or whether this will be via a more formal re-examination process remains to be seen, but a situation whereby those rights simply disappear altogether would seem unlikely. Action to take now (and what not to do) European IP rights holders should not therefore spend time contemplating whether or not current rights will exist in the post-Brexit era, but should spend time now ensuring that their IP portfolios will thrive when that era finally arrives. Now is the perfect time to conduct a health check of your IP portfolio, not just in the light of the impending changes following Brexit, but also in the light of changes that have already taken place. We're helping our clients to take the following steps to strengthen their brands and portfolios: Review your use - are you using your EU Trade Marks throughout Europe, or only in certain territories? With or without Brexit, failure to use your mark in a substantial part of the EU could render your registrations vulnerable Review your specifications - there is still time before the September deadline to amend specifications containing class headings to ensure that valuable scope of protection is not lost Review any co-existence agreements - those that define the territory as the EU may need further definition or clarification to ensure continuance in the UK following Brexit Re-consider seniority claims - it is perhaps better to maintain any national UK rights that you enjoy rather than allowing them to lapse in lieu of seniority claims against under EU Trade Mark Registrations. Seniority claims are relatively untested, and at a time of uncertainty, maintenance of existing UK national rights would seem preferable International Applications - if considering filing an International Application, it would seem preferable at this stage to base that application on a national UK application or registration rather than a European mark - long examination procedures in certain Madrid Protocol territories could result in uncertainty for Internationals based on European rights that remain pending at the time of Brexit New Applications - consider whether you really need an EU Trade Mark Registration, or whether a UK registration is in actual fact sufficient. Whereas an EU Registration was once seen as a way of obtaining bonus protection throughout the EU including the UK for minimal extra cost, it would now seem unnecessary, and potentially dangerous, if in actual fact your business is based solely in the UK Consider customs applications - used to prevent infringing/counterfeit goods from passing through the relevant national customs. Tighter border controls are likely to become a reality in the future, and IP rights holders need customs officials on their side We're here to help Shoosmiths is home to a team of nationally recognised IP experts and includes a dedicated Trade Mark team and a UK Registered and European Trade Mark Attorney - they are all here to help you and your business at a time of uncertainty for European IP rights holders. We'll work with you to review your IP portfolios, and offer guidance and recommendations on best practice in the light of the various changes that have already taken place, and those that are yet to come. Whilst we may not be able to predict the future, in understanding your business and considering your future needs with you, we can prepare your IP portfolio to withstand the changes, and to thrive in our post-Brexit future. We're continuing to provide solid legal support to brand owners to help them to protect and maximise the value of their brands. If you'd like more information on how we can help you to manage your brand or if you have any questions relating to Brexit and how it affects you as a brand owner, then please do not hesitate to get in touch. DisclaimerThis document is for informational purposes only and does not constitute legal advice. It is recommended that specific professional advice is sought before acting on any of the information given.Tue, 19 Jul 2016 00:00:00 +0100<![CDATA[Laura Harper ]]><![CDATA[ The result of the EU Referendum or 'Brexit' has naturally left Intellectual Property (IP) rights holders concerned and confused over their current and future position. The current state of play - a brief history Given that the withdrawal of the UK from the EU will have no effect on its membership of the European Patent Organisation, and as such, will have no real impact on patent protection in Europe and the UK, it is of course brand owners who will be most affected by Brexit. But this is not the first time in recent years that brand owners have experienced change in their European protection. In the last few years, brand owners have seen a considerable shake-up of the EU Trade Mark Registration system, with a recent European decision removing territorial borders in the consideration of what constitutes 'genuine use' of a European Trade Mark. The effect for brand owners has been that the long held principal of unitary character - that European Trade Mark Registrations are valid throughout the EU provided use has been made in at least one member state of the EU - has essentially been blown out of the water, potentially leaving EU Registrations vulnerable to cancellation actions. Shortly afterwards, brand owners faced the introduction of the new EU Regulations brought into force in March of this year. The effect on brand owners has been that many European Trade Marks became vulnerable to a narrowed scope of protection through amendments to the treatment of class headings within specifications. Now brand owners have Brexit. The effect for brand owners is unknown at this time. Not the first time So Brexit is not the first time that European Trade Mark rights have been called into question, and it is unlikely to be the last. IP law is ever-changing and savvy brand owners should be constantly reviewing their IP portfolios to ensure they are adequately protected. Whilst we do not yet know what transitional provisions will be put into place for European IP rights holders following Brexit, it is difficult to foresee a future in which no transitional provisions at all are adopted. Let's not forget that this is an issue facing all European Trade Mark Rights holders, not just those rights holders based in the UK. A situation where large corporations from the other great commercial powerhouses of the world - the US, Japan, China, to name but a few - potentially losing over 20 years' worth of IP protection at an economically sensitive and commercially unstable time, when the UK needs to strengthen, not weaken, those international ties, is likely to be as unthinkable for the UK government as it is for the IP rights holders themselves. Therefore, whilst we cannot say for sure, the more likely future and one much easier to imagine, is one in which transitional provisions are put into place allowing the continuation of protection in the UK via some form of conversion of those European rights to national UK rights. Whether this will be a rubber stamping exercise by the UKIPO, or whether this will be via a more formal re-examination process remains to be seen, but a situation whereby those rights simply disappear altogether would seem unlikely. Action to take now (and what not to do) European IP rights holders should not therefore spend time contemplating whether or not current rights will exist in the post-Brexit era, but should spend time now ensuring that their IP portfolios will thrive when that era finally arrives. Now is the perfect time to conduct a health check of your IP portfolio, not just in the light of the impending changes following Brexit, but also in the light of changes that have already taken place. We're helping our clients to take the following steps to strengthen their brands and portfolios: Review your use - are you using your EU Trade Marks throughout Europe, or only in certain territories? With or without Brexit, failure to use your mark in a substantial part of the EU could render your registrations vulnerable Review your specifications - there is still time before the September deadline to amend specifications containing class headings to ensure that valuable scope of protection is not lost Review any co-existence agreements - those that define the territory as the EU may need further definition or clarification to ensure continuance in the UK following Brexit Re-consider seniority claims - it is perhaps better to maintain any national UK rights that you enjoy rather than allowing them to lapse in lieu of seniority claims against under EU Trade Mark Registrations. Seniority claims are relatively untested, and at a time of uncertainty, maintenance of existing UK national rights would seem preferable International Applications - if considering filing an International Application, it would seem preferable at this stage to base that application on a national UK application or registration rather than a European mark - long examination procedures in certain Madrid Protocol territories could result in uncertainty for Internationals based on European rights that remain pending at the time of Brexit New Applications - consider whether you really need an EU Trade Mark Registration, or whether a UK registration is in actual fact sufficient. Whereas an EU Registration was once seen as a way of obtaining bonus protection throughout the EU including the UK for minimal extra cost, it would now seem unnecessary, and potentially dangerous, if in actual fact your business is based solely in the UK Consider customs applications - used to prevent infringing/counterfeit goods from passing through the relevant national customs. Tighter border controls are likely to become a reality in the future, and IP rights holders need customs officials on their side We're here to help Shoosmiths is home to a team of nationally recognised IP experts and includes a dedicated Trade Mark team and a UK Registered and European Trade Mark Attorney - they are all here to help you and your business at a time of uncertainty for European IP rights holders. We'll work with you to review your IP portfolios, and offer guidance and recommendations on best practice in the light of the various changes that have already taken place, and those that are yet to come. Whilst we may not be able to predict the future, in understanding your business and considering your future needs with you, we can prepare your IP portfolio to withstand the changes, and to thrive in our post-Brexit future. We're continuing to provide solid legal support to brand owners to help them to protect and maximise the value of their brands. If you'd like more information on how we can help you to manage your brand or if you have any questions relating to Brexit and how it affects you as a brand owner, then please do not hesitate to get in touch. DisclaimerThis document is for informational purposes only and does not constitute legal advice. It is recommended that specific professional advice is sought before acting on any of the information given.]]>{9E1E4413-C176-4B7B-92E7-142FB5B0C264}https://www.shoosmiths.co.uk/news/press-releases/11454.aspxEU Referendum result: Shoosmiths experts comment Shoosmiths' experts in competition, employment, real estate, corporate and commercial comment on the EU referendum result. Competition Law Simon Barnes, head of EU and competition at Shoosmiths The UK's competition laws mirror that of the EU's, therefore the vote to leave should in principle have very little, if any, effect on the competition law assessment of commercial agreements. The leave vote could see changes in how competition law applies to certain types of commercial arrangement, such as distribution and licensing agreements, as the current rules come from the European Commission block exemption regulations and guidelines. These could be discarded now that we have opted out of the EU. Disparities between the UK and EU's competition laws may emerge in the long term when differences in levels of enforcement and court judgements become apparent. Should the EU guidance be repealed, both the lawfulness of commercial arrangements and the compliance to varying rules in different jurisdictions will be a concern for businesses. The EU Merger Regulation will now cease to apply with deals in future potentially having to be reviewed under both the Merger Regulation and the UK's domestic merger rules. Control of State aid can now be retained by the UK, possibly allowing the UK to benefit from public support by way of grants and favourable tax regimes. However, respecting the existing EU rules on this may prove crucial in securing access to the EU single market. Similarly the existing public procurement regime will most likely stay put to promote competitiveness in public tender processes and act as a tool in negotiating single market access. Employment Law Charles Rae, employment partner at Shoosmiths Now that the UK has voted to leave the EU, once Brexit is completed the Government could in theory decide to repeal or revise a significant proportion of the UK's employment laws, where these are laws that are required as part of the UK's membership of the EU. A number of employment laws fall into this category, such as many of the anti-discrimination rights, transfer of undertakings regulations, family leave entitlements, collective consultation obligations, duties to agency workers or working time regulations. However, any kind of wholesale change seems unlikely for a number of reasons. Many of the laws in question have become so ingrained within UK businesses that it seems unlikely the Government would take steps to significantly change or remove them, especially where they provide rights to employees that have become widely accepted and valued. Moreover, much of the UK's employment legislation pre-dates the EU imposed ones, and have instead been built upon by later EU requirements, so the foundations are already in place. For instance, the UK already had race and disability discrimination rules before the EU wide requirements were introduced. Many feel that more likely than repealing laws, the Government would take the opportunity to smooth off some of the less popular requirements set down by the EU, for example restrictions on changing terms and conditions following a TUPE transfer. We may also find that freedom of movement within the EU leaves uncertainty as to the status of EU nationals who already work in the UK (and vice versa). Many businesses rely on EU workers and will want to be satisfied that their right to remain in the UK (and to therefore provide their services) is not going to be adversely affected. Equally, it isn't clear what a Brexit will mean for EU nationals currently working in the UK. Many potential solutions have been mooted, such as a compromise that would see current EU migrants given a set period of time to remain in the UK during which they can apply for citizenship, in return for UK citizens currently abroad to remain where they are on the same basis. Real Estate Simon Boss, real estate partner at Shoosmiths Given that the commercial real estate deals flow has already been impacted by the uncertainty that abounded in the run up to the referendum, we may see some clients putting deals on hold in the wake of the leave result. Equally, we may see some pick up in transactions as some investors look to reduce their exposure to the UK market. For some funds and investors this may present an opportunity to acquire at an attractive price. Since its creation, no Member State has ever left the European Union so we have no clear precedent in regards to what happens next and this is as much the case for the real estate sector as it is for the wider commercial arena. Withdrawal from the EU could have major implications for the construction industry, which is already tackling a labour shortage. Tightened immigration control could now exacerbate this issue, given that a large percentage of EU immigrants work in the construction sector. What many will be waiting most anxiously to determine though is how far foreign investment into British real estate will be impacted by our withdrawal from the EU. Will the position of Britain as a primary choice for commercial real estate investment in Europe suffer? Until some certainty returns to the market, this could well reduce the UK's reputation as a safe haven for real estate investment. Corporate - Private Equity Kieran Toal, corporate partner at Shoosmiths We're now in uncharted waters - no member state has left the EU since its inception and how the economy and UK businesses will fare is hard to predict. However in terms of the Private Equity market, we are dealing with the relative unknown, but investors still need to invest. Admittedly there may be a slow start while buyers take stock but, once the wheels begin to turn, there is a plethora of cash-rich private equity houses with capital to invest and UK businesses with rich growth potential aren't going to lose their appeal overnight. There may well be a shift in focus, with businesses which are particularly reliant on European markets becoming less attractive propositions. But for the most part, likelihood is that the inertia caused by uncertainty over the vote will slowly lift. Commercial - Creative industries Laura Harper, partner in the national Intellectual Property &amp; Creative Industries group and head of the IP &amp; Creative Industries at Shoosmiths I think there is going to be concern and disappointment in the creative industries at this outcome. There are many questions that will have to be answered around funding, free movement of people and collaboration across film, television and the performing arts. Certainly it's no exaggeration to say regulation around Trade Mark protection is going to need redrafting creating uncertainty for companies here and abroad who own EU Trade Marks. The 'out' vote means there is going to have to be a transitional period where companies who have an EU Trade Mark will potentially lose protection in the UK and they will need to audit their TM portfolios to identify the areas which will require attention to ensure they apply for the necessary national coverage. As legal advisers we will provide advice on the basis that UK protection under EU trade marks will be eventually lost until we receive clarity on the transitional provisions to ensure that our clients' interests are fully protected. The patent system has taken decades to negotiate - the Unified Patent and Unified Patent Court was due to be implemented in 2017. With this vote this will probably be delayed and add an extra layer of process to the new Unified Patent and Court procedure.Fri, 24 Jun 2016 00:00:00 +0100<![CDATA[ Shoosmiths' experts in competition, employment, real estate, corporate and commercial comment on the EU referendum result. Competition Law Simon Barnes, head of EU and competition at Shoosmiths The UK's competition laws mirror that of the EU's, therefore the vote to leave should in principle have very little, if any, effect on the competition law assessment of commercial agreements. The leave vote could see changes in how competition law applies to certain types of commercial arrangement, such as distribution and licensing agreements, as the current rules come from the European Commission block exemption regulations and guidelines. These could be discarded now that we have opted out of the EU. Disparities between the UK and EU's competition laws may emerge in the long term when differences in levels of enforcement and court judgements become apparent. Should the EU guidance be repealed, both the lawfulness of commercial arrangements and the compliance to varying rules in different jurisdictions will be a concern for businesses. The EU Merger Regulation will now cease to apply with deals in future potentially having to be reviewed under both the Merger Regulation and the UK's domestic merger rules. Control of State aid can now be retained by the UK, possibly allowing the UK to benefit from public support by way of grants and favourable tax regimes. However, respecting the existing EU rules on this may prove crucial in securing access to the EU single market. Similarly the existing public procurement regime will most likely stay put to promote competitiveness in public tender processes and act as a tool in negotiating single market access. Employment Law Charles Rae, employment partner at Shoosmiths Now that the UK has voted to leave the EU, once Brexit is completed the Government could in theory decide to repeal or revise a significant proportion of the UK's employment laws, where these are laws that are required as part of the UK's membership of the EU. A number of employment laws fall into this category, such as many of the anti-discrimination rights, transfer of undertakings regulations, family leave entitlements, collective consultation obligations, duties to agency workers or working time regulations. However, any kind of wholesale change seems unlikely for a number of reasons. Many of the laws in question have become so ingrained within UK businesses that it seems unlikely the Government would take steps to significantly change or remove them, especially where they provide rights to employees that have become widely accepted and valued. Moreover, much of the UK's employment legislation pre-dates the EU imposed ones, and have instead been built upon by later EU requirements, so the foundations are already in place. For instance, the UK already had race and disability discrimination rules before the EU wide requirements were introduced. Many feel that more likely than repealing laws, the Government would take the opportunity to smooth off some of the less popular requirements set down by the EU, for example restrictions on changing terms and conditions following a TUPE transfer. We may also find that freedom of movement within the EU leaves uncertainty as to the status of EU nationals who already work in the UK (and vice versa). Many businesses rely on EU workers and will want to be satisfied that their right to remain in the UK (and to therefore provide their services) is not going to be adversely affected. Equally, it isn't clear what a Brexit will mean for EU nationals currently working in the UK. Many potential solutions have been mooted, such as a compromise that would see current EU migrants given a set period of time to remain in the UK during which they can apply for citizenship, in return for UK citizens currently abroad to remain where they are on the same basis. Real Estate Simon Boss, real estate partner at Shoosmiths Given that the commercial real estate deals flow has already been impacted by the uncertainty that abounded in the run up to the referendum, we may see some clients putting deals on hold in the wake of the leave result. Equally, we may see some pick up in transactions as some investors look to reduce their exposure to the UK market. For some funds and investors this may present an opportunity to acquire at an attractive price. Since its creation, no Member State has ever left the European Union so we have no clear precedent in regards to what happens next and this is as much the case for the real estate sector as it is for the wider commercial arena. Withdrawal from the EU could have major implications for the construction industry, which is already tackling a labour shortage. Tightened immigration control could now exacerbate this issue, given that a large percentage of EU immigrants work in the construction sector. What many will be waiting most anxiously to determine though is how far foreign investment into British real estate will be impacted by our withdrawal from the EU. Will the position of Britain as a primary choice for commercial real estate investment in Europe suffer? Until some certainty returns to the market, this could well reduce the UK's reputation as a safe haven for real estate investment. Corporate - Private Equity Kieran Toal, corporate partner at Shoosmiths We're now in uncharted waters - no member state has left the EU since its inception and how the economy and UK businesses will fare is hard to predict. However in terms of the Private Equity market, we are dealing with the relative unknown, but investors still need to invest. Admittedly there may be a slow start while buyers take stock but, once the wheels begin to turn, there is a plethora of cash-rich private equity houses with capital to invest and UK businesses with rich growth potential aren't going to lose their appeal overnight. There may well be a shift in focus, with businesses which are particularly reliant on European markets becoming less attractive propositions. But for the most part, likelihood is that the inertia caused by uncertainty over the vote will slowly lift. Commercial - Creative industries Laura Harper, partner in the national Intellectual Property &amp; Creative Industries group and head of the IP &amp; Creative Industries at Shoosmiths I think there is going to be concern and disappointment in the creative industries at this outcome. There are many questions that will have to be answered around funding, free movement of people and collaboration across film, television and the performing arts. Certainly it's no exaggeration to say regulation around Trade Mark protection is going to need redrafting creating uncertainty for companies here and abroad who own EU Trade Marks. The 'out' vote means there is going to have to be a transitional period where companies who have an EU Trade Mark will potentially lose protection in the UK and they will need to audit their TM portfolios to identify the areas which will require attention to ensure they apply for the necessary national coverage. As legal advisers we will provide advice on the basis that UK protection under EU trade marks will be eventually lost until we receive clarity on the transitional provisions to ensure that our clients' interests are fully protected. The patent system has taken decades to negotiate - the Unified Patent and Unified Patent Court was due to be implemented in 2017. With this vote this will probably be delayed and add an extra layer of process to the new Unified Patent and Court procedure.]]>{348ECEC2-7866-4393-AD2A-1E8AC7D9EA87}https://www.shoosmiths.co.uk/client-resources/legal-updates/kiddee-case-does-not-infringe-trunki-design-11112.aspxUK Supreme Court Ruling: Kiddee Case does not infringe Trunki design On 9 March 2016, the UK Supreme Court upheld the Court of Appeal's ruling that the 'Kiddee Case', by PMS International Group plc (PMS), did not infringe Magmatic Limited's Trunki Case design (Community Registered Design No. 43427-0001) (the 'CRD'). Background Magmatic Limited (Magmatic) design, manufacture and sell the Trunki, ride-on, children's suitcases. PMS sells the Kiddee Case luggage. Magmatic claimed that PMS infringed the registered design rights of its Trunki Case with a similar animal design suitcase. What was decided? The UK Supreme Court held that it could not interfere with the Court of Appeal's decision because it had utilised the correct basis in law in arriving at that decision. Lord Neuberger, of the UK Supreme Court, reiterated that in determining whether a Community Registered Design is infringed by an item, a judge must decide whether the item produces on the informed user a different overall impression from the design. The CRD being relied upon was represented by minimalist monochrome 3D Computer Assisted Design images with absent ornamentation, and thus the design right protection granted to Magmatic was only in relation to such minimalist design. Lord Neuberger expressed that 'an applicant for a design right is entitled, within very broad limits, to submit any images which he chooses', and Magmatic chose to submit minimalist grey-scale images as a representation of the design which it wanted to protect as a Community Registered Design. On the other hand, the Kiddee Case was brightly coloured, with eyes at the front, decorated with spots or stripes and whiskers, and had covered wheels. Consequently, based on the CRD, it was held that the overall impression created by the two designs was very different. Lord Neuberger's judgment went further by expressing that, even if he were able to interfere with the earlier decision of the Court of Appeal, he would have arrived at the same conclusion. However, Lord Neuberger said that it would have been a conclusion that he would have reached regretfully, as the conception of the Trunki Case seemed to him to have been 'both original and clever'. Lord Neuberger even brought to light that 'Mr Beverly of PMS conceived the idea of manufacturing the Kiddee Case as a result of seeing a Trunki Case, and discovering that a discount model was not available'. He clarified 'unfortunately for Magmatic however, that this appeal is not concerned with an idea or an invention, but with a design' - perhaps alluding to the limited scope of Magmatic's CRD or maybe even a misunderstood or misused Community Design Rights framework. What does the judgment mean for designers? Many commentators are expressing their concern that this judgment will adversely impact the design industry to the extent that it will deter creators in investing in designs because those creators will think that their design will not be afforded sufficient protection. We hope that this the judgment will prompt creators to pay greater attention to the designs they submit as part of a Community Design Right application, because, in the words of Lord Neuberger, it will 'almost always be those images which exclusively identify the nature and extent of the monopoly which is [claimed]'. To read the UK Supreme Court's full judgment click here. Shoosmiths' IP &amp; Creative Industries team specialise in brand and intellectual property rights advice. For more information about this case or how we can help you, please contact Laura Harper, partner at laura.harper@shoosmiths.co.uk DisclaimerThis document is for informational purposes only and does not constitute legal advice. It is recommended that specific professional advice is sought before acting on any of the information given.Thu, 24 Mar 2016 00:00:00 Z<![CDATA[Carol Isherwood ]]><![CDATA[ On 9 March 2016, the UK Supreme Court upheld the Court of Appeal's ruling that the 'Kiddee Case', by PMS International Group plc (PMS), did not infringe Magmatic Limited's Trunki Case design (Community Registered Design No. 43427-0001) (the 'CRD'). Background Magmatic Limited (Magmatic) design, manufacture and sell the Trunki, ride-on, children's suitcases. PMS sells the Kiddee Case luggage. Magmatic claimed that PMS infringed the registered design rights of its Trunki Case with a similar animal design suitcase. What was decided? The UK Supreme Court held that it could not interfere with the Court of Appeal's decision because it had utilised the correct basis in law in arriving at that decision. Lord Neuberger, of the UK Supreme Court, reiterated that in determining whether a Community Registered Design is infringed by an item, a judge must decide whether the item produces on the informed user a different overall impression from the design. The CRD being relied upon was represented by minimalist monochrome 3D Computer Assisted Design images with absent ornamentation, and thus the design right protection granted to Magmatic was only in relation to such minimalist design. Lord Neuberger expressed that 'an applicant for a design right is entitled, within very broad limits, to submit any images which he chooses', and Magmatic chose to submit minimalist grey-scale images as a representation of the design which it wanted to protect as a Community Registered Design. On the other hand, the Kiddee Case was brightly coloured, with eyes at the front, decorated with spots or stripes and whiskers, and had covered wheels. Consequently, based on the CRD, it was held that the overall impression created by the two designs was very different. Lord Neuberger's judgment went further by expressing that, even if he were able to interfere with the earlier decision of the Court of Appeal, he would have arrived at the same conclusion. However, Lord Neuberger said that it would have been a conclusion that he would have reached regretfully, as the conception of the Trunki Case seemed to him to have been 'both original and clever'. Lord Neuberger even brought to light that 'Mr Beverly of PMS conceived the idea of manufacturing the Kiddee Case as a result of seeing a Trunki Case, and discovering that a discount model was not available'. He clarified 'unfortunately for Magmatic however, that this appeal is not concerned with an idea or an invention, but with a design' - perhaps alluding to the limited scope of Magmatic's CRD or maybe even a misunderstood or misused Community Design Rights framework. What does the judgment mean for designers? Many commentators are expressing their concern that this judgment will adversely impact the design industry to the extent that it will deter creators in investing in designs because those creators will think that their design will not be afforded sufficient protection. We hope that this the judgment will prompt creators to pay greater attention to the designs they submit as part of a Community Design Right application, because, in the words of Lord Neuberger, it will 'almost always be those images which exclusively identify the nature and extent of the monopoly which is [claimed]'. To read the UK Supreme Court's full judgment click here. Shoosmiths' IP &amp; Creative Industries team specialise in brand and intellectual property rights advice. For more information about this case or how we can help you, please contact Laura Harper, partner at laura.harper@shoosmiths.co.uk DisclaimerThis document is for informational purposes only and does not constitute legal advice. It is recommended that specific professional advice is sought before acting on any of the information given.]]>{99DD6C3D-4E87-44EA-9028-D2C9A908B34F}https://www.shoosmiths.co.uk/client-resources/legal-updates/enforcement-legal-rights-reputation-management-10951.aspxRap artist M.I.A. brings attention to the importance of balancing the enforcement of legal rights with reputation management London rapper Mathangi "Maya" Arulpragasam pka M.I.A. is known for being an artist who is not afraid to express her political opinions and promote causes about which she is passionate through her art form. Late last year M.I.A. released a music video for her song entitled 'Borders' (the Video), in which she denounces the treatment and living conditions of refugees - a well-intentioned and commendable message many would think. In the Video M.I.A. wears a modified football jersey of, the French football club, Paris Saint-Germain (PSG). M.I.A. changed the jersey so that the logo of Emirates, one of PSG's sponsors, read 'Fly Pirates' instead of 'Fly Emirates'. Subsequent to the Video's release, on 14 December 2015 PSG's deputy CEO sought to instigate legal action and issued M.I.A. with a letter of claim asserting PSG's legal rights in their brand and requiring that M.I.A. cease broadcasting images on any media which showed the PSG jersey, because, PSG stated, 'we consider the use of our brand and image in a video clip denouncing the treatment of refugees is a source of discredit for our club'. The letter asserts that M.I.A. caused PSG an image prejudice and adversely took advantage of the club's reputation which has caused them economic loss, and for which M.I.A. can be held liable under Article 1382 of the French Civil Code. Article 1382 relates to tortious liability and broadly states that 'any act whatever of man, which causes damage to another, obliges the one by whose fault it occurred, to compensate it'. There are similar causes of action under English law which protect the rights of brand owners in their names or marks including their look and feel, such as passing-off. In a passing-off action under English law, PSG would have to successfully establish: that they built-up a reputation or goodwill as at the time of the act complained of; that M.I.A. made a misrepresentation to the public (whether or not intentional) which has caused or is likely to cause an erroneous belief that M.I.A. is endorsed by or associated with PSG; and as a result, that PSG have suffered damage and/or loss Potential remedies for a passing-off action include damages or account of profits; an order for delivery up; and an injunction. Although PSG's letter did not refer to trade mark infringement in respect of the changes to the Emirates logo, we do not know whether, as a sponsor, Emirates prompted or encouraged PSG to issue the letter in an attempt to protect its brand or trade mark. Similarly, presumably PSG would be inclined to do so to preserve its relationship with its sponsors. M.I.A. seemingly decided to fight against PSG's claims in a controversial and non-conventional manner, for which she has built a reputation, by Tweeting photos of the letter to her 664,000 strong followers on 11 January 2016. She also posted an Instagram photo of her wearing the jersey asking her followers how they thought she should respond to PSG's demand that the images cease being broadcast. In an undaunted fashion, M.I.A. has also chosen a photo of her in the jersey as her Twitter profile picture and is using her Twitter account to retweet comments of support. Not only is M.I.A. getting greater exposure for herself and, particularly, her Borders release but, PSG is the recipient of much negative attention and commentary from M.I.A.'s fan base and beyond - an aftermath which PSG and its lawyers most likely did not consider a possibility, or severely underestimated the aftermath's potency. It also appears as though PSG and their lawyers did not appreciate the quiddity of their prospective defendant. Presumably, if they had they would not have dealt with the protection and enforcement of their brand and legal rights in the way that they did. Arguably PSG's actions have caused themselves, and their sponsor Emirates, more damage and loss than if they had not taken any action at all. This aftermath demonstrates the danger of rights holders and their legal advisers not fully considering and appreciating the, often far-reaching, context in which they are in (including any common ground for resolution); and the significance of making a sound judgement call based on that context - which is a crucial lesson for all. Shoosmiths' IP &amp; Creative Industries team specialise in brand and intellectual property rights advice, as well as reputational management. Please contact Carol Isherwood at carol.isherwood@shoosmiths.co.uk or 03700 86 5882 for more information about how we can help you. DisclaimerThis document is for informational purposes only and does not constitute legal advice. It is recommended that specific professional advice is sought before acting on any of the information given.Wed, 10 Feb 2016 00:00:00 Z<![CDATA[Carol Isherwood ]]><![CDATA[ London rapper Mathangi "Maya" Arulpragasam pka M.I.A. is known for being an artist who is not afraid to express her political opinions and promote causes about which she is passionate through her art form. Late last year M.I.A. released a music video for her song entitled 'Borders' (the Video), in which she denounces the treatment and living conditions of refugees - a well-intentioned and commendable message many would think. In the Video M.I.A. wears a modified football jersey of, the French football club, Paris Saint-Germain (PSG). M.I.A. changed the jersey so that the logo of Emirates, one of PSG's sponsors, read 'Fly Pirates' instead of 'Fly Emirates'. Subsequent to the Video's release, on 14 December 2015 PSG's deputy CEO sought to instigate legal action and issued M.I.A. with a letter of claim asserting PSG's legal rights in their brand and requiring that M.I.A. cease broadcasting images on any media which showed the PSG jersey, because, PSG stated, 'we consider the use of our brand and image in a video clip denouncing the treatment of refugees is a source of discredit for our club'. The letter asserts that M.I.A. caused PSG an image prejudice and adversely took advantage of the club's reputation which has caused them economic loss, and for which M.I.A. can be held liable under Article 1382 of the French Civil Code. Article 1382 relates to tortious liability and broadly states that 'any act whatever of man, which causes damage to another, obliges the one by whose fault it occurred, to compensate it'. There are similar causes of action under English law which protect the rights of brand owners in their names or marks including their look and feel, such as passing-off. In a passing-off action under English law, PSG would have to successfully establish: that they built-up a reputation or goodwill as at the time of the act complained of; that M.I.A. made a misrepresentation to the public (whether or not intentional) which has caused or is likely to cause an erroneous belief that M.I.A. is endorsed by or associated with PSG; and as a result, that PSG have suffered damage and/or loss Potential remedies for a passing-off action include damages or account of profits; an order for delivery up; and an injunction. Although PSG's letter did not refer to trade mark infringement in respect of the changes to the Emirates logo, we do not know whether, as a sponsor, Emirates prompted or encouraged PSG to issue the letter in an attempt to protect its brand or trade mark. Similarly, presumably PSG would be inclined to do so to preserve its relationship with its sponsors. M.I.A. seemingly decided to fight against PSG's claims in a controversial and non-conventional manner, for which she has built a reputation, by Tweeting photos of the letter to her 664,000 strong followers on 11 January 2016. She also posted an Instagram photo of her wearing the jersey asking her followers how they thought she should respond to PSG's demand that the images cease being broadcast. In an undaunted fashion, M.I.A. has also chosen a photo of her in the jersey as her Twitter profile picture and is using her Twitter account to retweet comments of support. Not only is M.I.A. getting greater exposure for herself and, particularly, her Borders release but, PSG is the recipient of much negative attention and commentary from M.I.A.'s fan base and beyond - an aftermath which PSG and its lawyers most likely did not consider a possibility, or severely underestimated the aftermath's potency. It also appears as though PSG and their lawyers did not appreciate the quiddity of their prospective defendant. Presumably, if they had they would not have dealt with the protection and enforcement of their brand and legal rights in the way that they did. Arguably PSG's actions have caused themselves, and their sponsor Emirates, more damage and loss than if they had not taken any action at all. This aftermath demonstrates the danger of rights holders and their legal advisers not fully considering and appreciating the, often far-reaching, context in which they are in (including any common ground for resolution); and the significance of making a sound judgement call based on that context - which is a crucial lesson for all. Shoosmiths' IP &amp; Creative Industries team specialise in brand and intellectual property rights advice, as well as reputational management. Please contact Carol Isherwood at carol.isherwood@shoosmiths.co.uk or 03700 86 5882 for more information about how we can help you. DisclaimerThis document is for informational purposes only and does not constitute legal advice. It is recommended that specific professional advice is sought before acting on any of the information given.]]>{7E2FF724-7F9D-47A3-AAAF-AB4511B802F4}https://www.shoosmiths.co.uk/client-resources/legal-updates/youtube-reacts-10935.aspxYouTube &#39;reacts&#39; A recent decision by two YouTube bloggers to cancel their portfolio of trade mark applications serves as an important reminder for businesses to always take into account the commercial considerations of their actions. Brothers Benny and Rafi Fine run one of YouTube's most successful channels, Fine Brothers Entertainment, which has almost 14 million subscribers. The Fine brothers made their name with their hit series Kids React which involves videos showing the reaction of children when shown certain object or videos. Such was the success of this series that the brothers ran a number of spin off series including Adults React and YouTubers react. The 'reaction videos' led to a trend on YouTube with other YouTube users creating their own reaction videos, most of which use the word 'react' in the title. Following the success of the reactions series, the Fine Brothers set out to do what many businesses would have done in the same circumstances - seek to protect their brand and their dominant position by filing for a number of trade marks. Amongst the trade mark applications that the brothers filed for were the words 'react', 'kids react' and 'adults react', all under class 41 for entertainment services. The trade mark applications led to a YouTube backlash against the Fine brothers, with users concerned that they were attempting to police the use of reaction videos and the term 'react'. Now, after losing hundreds of thousands of followers, the brothers have apologised and announced that they have rescinded the entire portfolio of applications. This is yet another example of the power of social media and the Internet and an important reminder that business decisions do not always make commercial sense. One of the reasons that YouTube bloggers such as the Fine Brothers are so successful is that the channels they run are not operated by large corporations. More often than not, these are people that the general public can relate to. So whilst Benny and Rafi may have thought that this made business sense, what they didn't consider was their reliance on an audience that celebrates the openness and freedom of platforms such as YouTube. It goes without saying that it remains as important as ever for businesses to protect the IP that they create. However, commercial considerations should always be taken into account and this situation serves as a reminder that whilst it can take years to build a brand, that brand can be destroyed within seconds if not managed with care. DisclaimerThis document is for informational purposes only and does not constitute legal advice. It is recommended that specific professional advice is sought before acting on any of the information given. Mon, 08 Feb 2016 00:00:00 Z<![CDATA[Anastasia Fowle ]]><![CDATA[ A recent decision by two YouTube bloggers to cancel their portfolio of trade mark applications serves as an important reminder for businesses to always take into account the commercial considerations of their actions. Brothers Benny and Rafi Fine run one of YouTube's most successful channels, Fine Brothers Entertainment, which has almost 14 million subscribers. The Fine brothers made their name with their hit series Kids React which involves videos showing the reaction of children when shown certain object or videos. Such was the success of this series that the brothers ran a number of spin off series including Adults React and YouTubers react. The 'reaction videos' led to a trend on YouTube with other YouTube users creating their own reaction videos, most of which use the word 'react' in the title. Following the success of the reactions series, the Fine Brothers set out to do what many businesses would have done in the same circumstances - seek to protect their brand and their dominant position by filing for a number of trade marks. Amongst the trade mark applications that the brothers filed for were the words 'react', 'kids react' and 'adults react', all under class 41 for entertainment services. The trade mark applications led to a YouTube backlash against the Fine brothers, with users concerned that they were attempting to police the use of reaction videos and the term 'react'. Now, after losing hundreds of thousands of followers, the brothers have apologised and announced that they have rescinded the entire portfolio of applications. This is yet another example of the power of social media and the Internet and an important reminder that business decisions do not always make commercial sense. One of the reasons that YouTube bloggers such as the Fine Brothers are so successful is that the channels they run are not operated by large corporations. More often than not, these are people that the general public can relate to. So whilst Benny and Rafi may have thought that this made business sense, what they didn't consider was their reliance on an audience that celebrates the openness and freedom of platforms such as YouTube. It goes without saying that it remains as important as ever for businesses to protect the IP that they create. However, commercial considerations should always be taken into account and this situation serves as a reminder that whilst it can take years to build a brand, that brand can be destroyed within seconds if not managed with care. DisclaimerThis document is for informational purposes only and does not constitute legal advice. It is recommended that specific professional advice is sought before acting on any of the information given. ]]>{B3572384-6FC9-4F66-82AE-A0A123E4E698}https://www.shoosmiths.co.uk/services/intellectual-property-91.aspxIntellectual propertyFrom market-leading advice on global intellectual property disputes, and guidance on how to safeguard and grow your brand, to navigating the complexities of drug discovery and development, Shoosmiths’ IP team can provide you with the very best advice to protect and enhance your intellectual assets.Wed, 07 Oct 2015 00:00:00 +0100<![CDATA[From market-leading advice on global intellectual property disputes, and guidance on how to safeguard and grow your brand, to navigating the complexities of drug discovery and development, Shoosmiths’ IP team can provide you with the very best advice to protect and enhance your intellectual assets.]]>{E24DDBBC-AF16-47CF-8BF6-E15F7ECCFDC3}https://www.shoosmiths.co.uk/client-resources/legal-updates/court-considers-serious-harm-defamation-dispute-10234.aspxThe court considers &#39;serious harm&#39; in the context of a defamation dispute In Lachaux v Independent Print Ltd, Evening Standard Ltd, AOL (UK) Ltd, the high court considered the construction of 'serious harm' under section 1 of the Defamation Act 2013 (the Act). Section 1 of the Act, states 'a statement is not defamatory unless its publication has caused or is likely to cause serious harm to the reputation of the claimant'. This is the first key decision to analyse exactly what that means. In brief - it was held that libel is no longer actionable without proof of damage. A cause of action now only arises where it is proved that it caused - or probably will cause - serious harm to the claimant. In evidencing serious harm / damage, the court can now look at evidence occurring after publication, meaning that the old common law rule on when a cause of action in libel arises, is no longer good law. Background The Claimant pursued five separate libel claims. Two of the claims related to articles published online in the Huffington Post by AOL (UK) Limited, two were published in The Independent newspaper and its sister paper, 'i' by Independent Print Limited, and the fifth article was published by Evening Standard Limited. The articles, published between 20 January and 10 February 2014, contained an account of events in the UAE, including proceedings against the claimant's ex-wife for allegedly 'kidnapping' their son and reported allegations against the claimant for domestic abuse. The court considered a number of issues by way of preliminary issue but this briefing focuses on the question of construction of section 1 of the Act. Serious harm On the question of 'serious harm', the Judge had to consider two legal issues: 1. does section 1 require that the words have a tendency to cause serious harm to the claimant's reputation; or that serious harm has, been or is likely to be caused to his reputation in the future (on the balance of probabilities). The court held the latter was the appropriate test. In proving serious harm, it also held that all relevant circumstances should be considered, including evidence of what has actually happened after publication. The court decided that where the issue of serious harm is in dispute, and a defendant argues the harm caused was not serious to justify a claim, the issue should be tried as a preliminary issue. When considering when a statement 'is likely to' cause serious harm, the court held that the preferable view was when the claim was determined, rather than when the claim was issued, as 'a cause of action may lie inchoate until serious harm is caused or its future occurrence becomes probable.' 2. In reaching a conclusion on the issue of whether a publication caused or is likely to cause serious harm, the court considered whether it can and should take account of other publications to the same or similar effect as the material complained of. In this instance, the court found that other publications cannot be admitted into evidence for the purposes of reducing or limiting damages with reference to the seriousness of injury to reputation. Decision In this case, four out of the five articles were found to have caused the claimant serious harm. This was on the basis that those four articles had substantial circulations and readerships, both online and in print copy and that: 'there were, on the balance of probabilities, tens of people and possibly more than 100 who know or know of the claimant and read one or more of the articles and identified him, and who thought the worse of him as a result'. The article which was not found to constitute serious harm was an article containing 32 paragraphs where the claimant was only mentioned in 3 paragraphs towards the end. Further, the article had only 306 unique visitors over a period of 13 months. Practicalities Whilst each case is to be taken on a case-by-case basis, this judgment gives claimants guidance on what the court will take into consideration when determining the issue of serious harm. Serious harm caused or likely to be caused Claimants need to understand that unless serious harm can be proved to a person's reputation, a defamation claim will not arise. In establishing whether serious harm has occurred the court will look at all the circumstances of the case and each case turns on its own facts. Guidance has now been given, however, that 300 visitors to a website page may not constitute 'serious harm'. Companies/partnerships A company, partnership, and some other organisations may bring proceedings for defamation and seek damages from those responsible. The threshold for corporate claimants in respect of serious harm is even higher under Section 1(2) of the Act, which sets out that 'harm to the reputation of a body that trades for profit is not "serious harm" unless it has caused or is likely to cause the body serious financial loss'. False statements made about corporate bodies and/or business leaders (whether by a competitor, ex-employee or otherwise) can create a significant reputational risk for their organisations, and the bringing of proceedings, after the event, is often too late. The first 12 hours - what can you do? When faced with a crisis situation that involves the publication of false and defamatory statements, those affected should be pro-active to limit any damage which may be caused. The first 12 hours of a crisis are typically the most crucial when positioning to manage the reputational impact. It is often about big picture focus, strategic thinking and PR. Companies should ensure that they have an actively managed social media presence which can be deployed to detect and avert potential problems before they develop. We have an expert team within the Dispute Resolution and Compliance team at Shoosmiths who can guide clients through a crisis - the internal investigation, their interactions with regulators, their dealings with the press, external communications and any resulting litigation. We have links with PR consultancies and experience of deploying positive PR strategies. The team can work with you to provide expert support and guidance in that all important first 12 hours. DisclaimerThis document is for informational purposes only and does not constitute legal advice. It is recommended that specific professional advice is sought before acting on any of the information given. Thu, 06 Aug 2015 00:00:00 +0100<![CDATA[Rebekah Finch Kath Livingston ]]><![CDATA[ In Lachaux v Independent Print Ltd, Evening Standard Ltd, AOL (UK) Ltd, the high court considered the construction of 'serious harm' under section 1 of the Defamation Act 2013 (the Act). Section 1 of the Act, states 'a statement is not defamatory unless its publication has caused or is likely to cause serious harm to the reputation of the claimant'. This is the first key decision to analyse exactly what that means. In brief - it was held that libel is no longer actionable without proof of damage. A cause of action now only arises where it is proved that it caused - or probably will cause - serious harm to the claimant. In evidencing serious harm / damage, the court can now look at evidence occurring after publication, meaning that the old common law rule on when a cause of action in libel arises, is no longer good law. Background The Claimant pursued five separate libel claims. Two of the claims related to articles published online in the Huffington Post by AOL (UK) Limited, two were published in The Independent newspaper and its sister paper, 'i' by Independent Print Limited, and the fifth article was published by Evening Standard Limited. The articles, published between 20 January and 10 February 2014, contained an account of events in the UAE, including proceedings against the claimant's ex-wife for allegedly 'kidnapping' their son and reported allegations against the claimant for domestic abuse. The court considered a number of issues by way of preliminary issue but this briefing focuses on the question of construction of section 1 of the Act. Serious harm On the question of 'serious harm', the Judge had to consider two legal issues: 1. does section 1 require that the words have a tendency to cause serious harm to the claimant's reputation; or that serious harm has, been or is likely to be caused to his reputation in the future (on the balance of probabilities). The court held the latter was the appropriate test. In proving serious harm, it also held that all relevant circumstances should be considered, including evidence of what has actually happened after publication. The court decided that where the issue of serious harm is in dispute, and a defendant argues the harm caused was not serious to justify a claim, the issue should be tried as a preliminary issue. When considering when a statement 'is likely to' cause serious harm, the court held that the preferable view was when the claim was determined, rather than when the claim was issued, as 'a cause of action may lie inchoate until serious harm is caused or its future occurrence becomes probable.' 2. In reaching a conclusion on the issue of whether a publication caused or is likely to cause serious harm, the court considered whether it can and should take account of other publications to the same or similar effect as the material complained of. In this instance, the court found that other publications cannot be admitted into evidence for the purposes of reducing or limiting damages with reference to the seriousness of injury to reputation. Decision In this case, four out of the five articles were found to have caused the claimant serious harm. This was on the basis that those four articles had substantial circulations and readerships, both online and in print copy and that: 'there were, on the balance of probabilities, tens of people and possibly more than 100 who know or know of the claimant and read one or more of the articles and identified him, and who thought the worse of him as a result'. The article which was not found to constitute serious harm was an article containing 32 paragraphs where the claimant was only mentioned in 3 paragraphs towards the end. Further, the article had only 306 unique visitors over a period of 13 months. Practicalities Whilst each case is to be taken on a case-by-case basis, this judgment gives claimants guidance on what the court will take into consideration when determining the issue of serious harm. Serious harm caused or likely to be caused Claimants need to understand that unless serious harm can be proved to a person's reputation, a defamation claim will not arise. In establishing whether serious harm has occurred the court will look at all the circumstances of the case and each case turns on its own facts. Guidance has now been given, however, that 300 visitors to a website page may not constitute 'serious harm'. Companies/partnerships A company, partnership, and some other organisations may bring proceedings for defamation and seek damages from those responsible. The threshold for corporate claimants in respect of serious harm is even higher under Section 1(2) of the Act, which sets out that 'harm to the reputation of a body that trades for profit is not "serious harm" unless it has caused or is likely to cause the body serious financial loss'. False statements made about corporate bodies and/or business leaders (whether by a competitor, ex-employee or otherwise) can create a significant reputational risk for their organisations, and the bringing of proceedings, after the event, is often too late. The first 12 hours - what can you do? When faced with a crisis situation that involves the publication of false and defamatory statements, those affected should be pro-active to limit any damage which may be caused. The first 12 hours of a crisis are typically the most crucial when positioning to manage the reputational impact. It is often about big picture focus, strategic thinking and PR. Companies should ensure that they have an actively managed social media presence which can be deployed to detect and avert potential problems before they develop. We have an expert team within the Dispute Resolution and Compliance team at Shoosmiths who can guide clients through a crisis - the internal investigation, their interactions with regulators, their dealings with the press, external communications and any resulting litigation. We have links with PR consultancies and experience of deploying positive PR strategies. The team can work with you to provide expert support and guidance in that all important first 12 hours. DisclaimerThis document is for informational purposes only and does not constitute legal advice. It is recommended that specific professional advice is sought before acting on any of the information given. ]]>{68F5C42B-45AA-46AE-A913-FBC73F1FB128}https://www.shoosmiths.co.uk/news/press-releases/shoosmiths-boosts-ip-with-partner-hire-10062.aspxShoosmiths boosts IP with partner hire National law firm Shoosmiths has announced the appointment of partner, Andrew Brennan, boosting the firm's national intellectual property (IP) offering. Download hi-res image Andrew Brennan Andrew, who has over 10 years' experience, joins Shoosmiths from SGH Martineau's IP and technology team, where he predominantly advised technology, manufacturing and education clients on contentious and non-contentious intellectual property and technology issues. Legal directories, Chambers and Partners and Legal 500 recommend Andrew as a 'leading individual'. Andrew has represented a range of clients including large national and international companies, SMEs, spin-outs and universities on all aspects of the innovation, product and brand lifecycles by helping them fund, protect, enforce and commercialise their IP - including trade secrets, patents, copyright, designs and trade marks. He also advises on web, digital media, social media and advertising law matters. Andrew will continue to advise clients on such work in his new role at Shoosmiths. On his appointment, Andrew commented: 'Shoosmiths is a major UK law firm with a great profile and a sophisticated IP offering. Shoosmiths' wide-ranging client base is similar to my own and I feel the firm is a good fit not only for me but for the work I do and how I go about doing my work. The firm is renowned for its client service in the industry. 'Setting up the IP offering in Birmingham is a great opportunity not to be missed and I look forward to making my mark here.' National head of the firm's technology, media and commercial practice, David Jackson, said: 'We welcome Andrew to our national IP practice, which is well known for its breadth and depth of expertise. 'Andrew has a great reputation in the market and ensures his clients receive an exceptional experience, which is what Shoosmiths is famous for. I am sure Andrew will quickly help us to further enhance our client offering.' Tue, 30 Jun 2015 00:00:00 +0100<![CDATA[ National law firm Shoosmiths has announced the appointment of partner, Andrew Brennan, boosting the firm's national intellectual property (IP) offering. Download hi-res image Andrew Brennan Andrew, who has over 10 years' experience, joins Shoosmiths from SGH Martineau's IP and technology team, where he predominantly advised technology, manufacturing and education clients on contentious and non-contentious intellectual property and technology issues. Legal directories, Chambers and Partners and Legal 500 recommend Andrew as a 'leading individual'. Andrew has represented a range of clients including large national and international companies, SMEs, spin-outs and universities on all aspects of the innovation, product and brand lifecycles by helping them fund, protect, enforce and commercialise their IP - including trade secrets, patents, copyright, designs and trade marks. He also advises on web, digital media, social media and advertising law matters. Andrew will continue to advise clients on such work in his new role at Shoosmiths. On his appointment, Andrew commented: 'Shoosmiths is a major UK law firm with a great profile and a sophisticated IP offering. Shoosmiths' wide-ranging client base is similar to my own and I feel the firm is a good fit not only for me but for the work I do and how I go about doing my work. The firm is renowned for its client service in the industry. 'Setting up the IP offering in Birmingham is a great opportunity not to be missed and I look forward to making my mark here.' National head of the firm's technology, media and commercial practice, David Jackson, said: 'We welcome Andrew to our national IP practice, which is well known for its breadth and depth of expertise. 'Andrew has a great reputation in the market and ensures his clients receive an exceptional experience, which is what Shoosmiths is famous for. I am sure Andrew will quickly help us to further enhance our client offering.' ]]>{E03ED313-F1F4-43D2-A7DD-92479F2E551F}https://www.shoosmiths.co.uk/client-resources/legal-updates/private-copying-exemption-challenged-by-musicians-9966.aspxPrivate copying exemption challenged by musicians&#39; groups The private copying exemption permitting copying of copyright protected content, including music, which was introduced into English law on 1 October 2014, has come under attack in judicial review proceedings brought before the High Court. A narrow exemption The British Academy of Songwriters, Composers and Musicians, together with the Musicians Union and UK Music 2009 Limited, has successfully brought an application for judicial review against the decision of the Secretary of State for Business to introduce the new copyright exemption into English law. The new exemption set out at section 28B of the Copyright Designs and Patents Act 1988, was one of several introduced in 2014, including exemptions for parody and quotation. The private copying exemption permits individuals to make copies of content that they have purchased for their own private use. Prior to the introduction of the exemption, even copying a downloaded music file onto a CD was copyright infringement. The exemption and its definition of 'personal use' is very narrow however and even an individual burning a copy of an album for a friend would still be committing an act of infringement. Disgruntled musicians The applicants in the case for judicial review represent musicians, composers, and songwriters, all of whom, they argued, stood to lose out financially as a result of the new exemption. Whereas in the past a consumer would have to purchase a new copy of any musical work in order to avoid infringing copyright, under the new exemption individuals can legally copy content to the same or different media, a practice known as 'format shifting'. The government had the right under European Directive to introduce an exemption for private copying provided that, if the newly permitted acts would cause more that minimal harm to copyright owners, compensation would have to be payable in some form. In 21 out of 28 EC Member States, a levy of some sort has been introduced to compensate for the introduction of a private copying exemption. In the majority of cases the levy is charged on blank media (CDs for example) or equipment (such as computers and MP3 players). The government consulted extensively on the introduction of the private copying and other exemptions in copyright law. In a March 2014 'Impact Assessment', the Secretary of State sought to explain the decision to introduce the exemption without compensation for copyright holders on the basis that any losses that would occur under the new exception had already been taken into account in the market and would in the future be built into the initial price for sale of the content. Therefore it was concluded that no material harm would be suffered by copyright holders. Insufficient evidence? The applicants raised a number of arguments against the introduction of the exemption without a compensatory scheme attached, each of which are considered carefully by the Judge, Mr Justice Green, in his 107 page judgment. The Judge found in favour of the Secretary of State in respect of all of the applicant's arguments, with one exception. The Judge accepted the applicants' assertion that the evidence relied upon by the government to conclude that the introduction of the exemption would cause little or no harm to the content owners (in this case musicians and song writers), could not possibly have been sufficient to draw such a conclusion. Therefore the decision to introduce the private copying exemption without compensation was not made in accordance with legal requirements for the exercise of the government's discretion. So what happens now? As the government's right to introduce the private copying exemption derived from the a Directive of the European Community, the judge will now hear submissions from the parties on whether he should refer any questions to the Court of Justice of the European Union. He will also decide what relief, if any to grant the applicants. The decision does not however strike down the exemption. It is likely that the Secretary of State will conduct further investigations into the impact of introducing the exemption upon copyright owners. He may decide that further evidence supports his original position but it may also be the case that section 28B is repealed and a new version put in its place with a compensatory mechanism included. This case could prove to be highly significant - the introduction of the private copying exemption was seen as an important step in modernising English copyright law, the government may now need to go back to the drawing board to ensure that copyright law remains compatible with the 21st Century. The judgment in BASCA v The Secretary of State for Business, Innovation and Skills can be read here. Mon, 22 Jun 2015 00:00:00 +0100<![CDATA[Gary Assim ]]><![CDATA[ The private copying exemption permitting copying of copyright protected content, including music, which was introduced into English law on 1 October 2014, has come under attack in judicial review proceedings brought before the High Court. A narrow exemption The British Academy of Songwriters, Composers and Musicians, together with the Musicians Union and UK Music 2009 Limited, has successfully brought an application for judicial review against the decision of the Secretary of State for Business to introduce the new copyright exemption into English law. The new exemption set out at section 28B of the Copyright Designs and Patents Act 1988, was one of several introduced in 2014, including exemptions for parody and quotation. The private copying exemption permits individuals to make copies of content that they have purchased for their own private use. Prior to the introduction of the exemption, even copying a downloaded music file onto a CD was copyright infringement. The exemption and its definition of 'personal use' is very narrow however and even an individual burning a copy of an album for a friend would still be committing an act of infringement. Disgruntled musicians The applicants in the case for judicial review represent musicians, composers, and songwriters, all of whom, they argued, stood to lose out financially as a result of the new exemption. Whereas in the past a consumer would have to purchase a new copy of any musical work in order to avoid infringing copyright, under the new exemption individuals can legally copy content to the same or different media, a practice known as 'format shifting'. The government had the right under European Directive to introduce an exemption for private copying provided that, if the newly permitted acts would cause more that minimal harm to copyright owners, compensation would have to be payable in some form. In 21 out of 28 EC Member States, a levy of some sort has been introduced to compensate for the introduction of a private copying exemption. In the majority of cases the levy is charged on blank media (CDs for example) or equipment (such as computers and MP3 players). The government consulted extensively on the introduction of the private copying and other exemptions in copyright law. In a March 2014 'Impact Assessment', the Secretary of State sought to explain the decision to introduce the exemption without compensation for copyright holders on the basis that any losses that would occur under the new exception had already been taken into account in the market and would in the future be built into the initial price for sale of the content. Therefore it was concluded that no material harm would be suffered by copyright holders. Insufficient evidence? The applicants raised a number of arguments against the introduction of the exemption without a compensatory scheme attached, each of which are considered carefully by the Judge, Mr Justice Green, in his 107 page judgment. The Judge found in favour of the Secretary of State in respect of all of the applicant's arguments, with one exception. The Judge accepted the applicants' assertion that the evidence relied upon by the government to conclude that the introduction of the exemption would cause little or no harm to the content owners (in this case musicians and song writers), could not possibly have been sufficient to draw such a conclusion. Therefore the decision to introduce the private copying exemption without compensation was not made in accordance with legal requirements for the exercise of the government's discretion. So what happens now? As the government's right to introduce the private copying exemption derived from the a Directive of the European Community, the judge will now hear submissions from the parties on whether he should refer any questions to the Court of Justice of the European Union. He will also decide what relief, if any to grant the applicants. The decision does not however strike down the exemption. It is likely that the Secretary of State will conduct further investigations into the impact of introducing the exemption upon copyright owners. He may decide that further evidence supports his original position but it may also be the case that section 28B is repealed and a new version put in its place with a compensatory mechanism included. This case could prove to be highly significant - the introduction of the private copying exemption was seen as an important step in modernising English copyright law, the government may now need to go back to the drawing board to ensure that copyright law remains compatible with the 21st Century. The judgment in BASCA v The Secretary of State for Business, Innovation and Skills can be read here. ]]>{396AE212-ABCC-4270-A852-9036A99E9A1E}https://www.shoosmiths.co.uk/client-resources/legal-updates/adidas-accuses-marc-jacobs-trade-mark-infringement-9770.aspxMark v Marc: Adidas accuses Marc Jacobs of trade mark infringement Adidas AG recently filed a claim against Marc Jacobs International LLC in the US Federal Court for allegedly infringing its iconic Three-Stripe Trade Mark.Tue, 19 May 2015 00:00:00 +0100<![CDATA[Laura Harper ]]><![CDATA[ Adidas AG recently filed a claim against Marc Jacobs International LLC in the US Federal Court for allegedly infringing its iconic Three-Stripe Trade Mark.]]>{5AA78D2F-17E2-4E40-B475-E4310D1AAE33}https://www.shoosmiths.co.uk/news/press-releases/shoosmiths-acts-for-m-squared-lasers-in-health-research-agreement-9672.aspxShoosmiths acts for M Squared Lasers in health research agreement National law firm Shoosmiths has advised laser developer and manufacturer M Squared Lasers on an agreement to develop new technologies with the University of St Andrews. Stuart Malcolm, Partner M Squared Lasers explores, develops and manufactures next-generation lasers and photonic instruments that bring new capabilities, higher reliability and greater ease of use to a diverse range of industrial and scientific applications. The business has more than twenty years of experience in R&amp;D and manufacturing with a track record of award-winning products. The company recently was awarded the 2014 Sunday Times Tech Track Ones to Watch award. The patent licence agreement covers more than 100 patents, which researchers will use to develop commercial applications for the health sector. The patents cover areas such as imaging and raman spectroscopic analysis which can be used in the fight against cancer by accurately distinguishing between normal and unhealthy cells and tissue. Stuart Malcolm, Partner in the IPCI Team, led the negotiations with the University of St Andrews assisted by Olly Leyden, IP solicitor. Head of the Business Innovation Unit at M Squared Lasers, Dr Nils Hemplar, said: 'I would like to thank Shoosmiths for their expert advice throughout the agreement process, which has enabled us to match our knowledge with relevant academic research to lead significant developments in healthcare. We have a longstanding relationship with Stuart and his team and their specialist approach, coupled with a very evident passion for and definitive understanding of our technology sector, ensures that we are provided with distinctive and dynamic advice, always against the backdrop of an enlightened approach, determination and absolute commitment.' Stuart Malcolm, said: 'It was a pleasure to guide M Squared Lasers through another strategic licence arrangement in its growing IP portfolio and one that could lead to an improved understanding of life limiting illnesses and conditions such as cancer and alzheimer's disease. Our experience and expertise in intellectual property means we are well placed to help clients promote and accelerate their unique educational, research, intellectual and business assets.' Shoosmiths' UK-wide IPCI team is one of the most comprehensive in the country with more than a dozen dedicated specialists covering healthcare, digital, music, publishing, fashion, gaming, cyber security, branding and design. The team also sits in a wider 10-office national network with the breadth to offer clients the very best advice across the business spectrum. Tue, 28 Apr 2015 00:00:00 +0100<![CDATA[Gary Assim ]]><![CDATA[ National law firm Shoosmiths has advised laser developer and manufacturer M Squared Lasers on an agreement to develop new technologies with the University of St Andrews. Stuart Malcolm, Partner M Squared Lasers explores, develops and manufactures next-generation lasers and photonic instruments that bring new capabilities, higher reliability and greater ease of use to a diverse range of industrial and scientific applications. The business has more than twenty years of experience in R&amp;D and manufacturing with a track record of award-winning products. The company recently was awarded the 2014 Sunday Times Tech Track Ones to Watch award. The patent licence agreement covers more than 100 patents, which researchers will use to develop commercial applications for the health sector. The patents cover areas such as imaging and raman spectroscopic analysis which can be used in the fight against cancer by accurately distinguishing between normal and unhealthy cells and tissue. Stuart Malcolm, Partner in the IPCI Team, led the negotiations with the University of St Andrews assisted by Olly Leyden, IP solicitor. Head of the Business Innovation Unit at M Squared Lasers, Dr Nils Hemplar, said: 'I would like to thank Shoosmiths for their expert advice throughout the agreement process, which has enabled us to match our knowledge with relevant academic research to lead significant developments in healthcare. We have a longstanding relationship with Stuart and his team and their specialist approach, coupled with a very evident passion for and definitive understanding of our technology sector, ensures that we are provided with distinctive and dynamic advice, always against the backdrop of an enlightened approach, determination and absolute commitment.' Stuart Malcolm, said: 'It was a pleasure to guide M Squared Lasers through another strategic licence arrangement in its growing IP portfolio and one that could lead to an improved understanding of life limiting illnesses and conditions such as cancer and alzheimer's disease. Our experience and expertise in intellectual property means we are well placed to help clients promote and accelerate their unique educational, research, intellectual and business assets.' Shoosmiths' UK-wide IPCI team is one of the most comprehensive in the country with more than a dozen dedicated specialists covering healthcare, digital, music, publishing, fashion, gaming, cyber security, branding and design. The team also sits in a wider 10-office national network with the breadth to offer clients the very best advice across the business spectrum. ]]>{0606E0F9-170C-4AAF-83E4-73AE35A86427}https://www.shoosmiths.co.uk/client-resources/legal-updates/scrabble-v-scramble-a-jumbled-decision-9657.aspxScrabble v Scramble: a jumbled decision? The appeal against the High Court's ruling of JW Spear & Sons Ltd, Mattel Inc and Mattel UK Limited v Zynga Inc was decided recently - what does the decision mean for brand owners?Mon, 27 Apr 2015 00:00:00 +0100<![CDATA[Laura Harper ]]><![CDATA[ The appeal against the High Court's ruling of JW Spear & Sons Ltd, Mattel Inc and Mattel UK Limited v Zynga Inc was decided recently - what does the decision mean for brand owners?]]>{E611AA20-1875-491F-BEFB-DBE9AC76874A}https://www.shoosmiths.co.uk/client-resources/legal-updates/world-intellectual-property-day-change-for-music-9654.aspxWorld Intellectual Property day 2015: A change in the tide for music? On 26 April, World Intellectual Property Day will celebrate music with the aim of promoting discussion of the role of IP in encouraging innovation and creativity. As a part of this, there will be discussions across the globe exploring some of the challenges and subsequent changes shaping the music industry today. A key change in the music industry One of the key changes in recent years has been the way that we can access music. Streaming has becoming one of the most popular ways to access music with 60 million users signed up to industry leader Spotify. However, many artists didn't feel that letting the general public listen to their music for free was fair on the artist. With this in mind, last month, American rapper and producer, Jay Z, launched a rival platform called 'Tidal' - with the view that through this service (with no 'free' option), artists would be paid for their work. At $20-per-month, Tidal promises exclusive content and videos that other streaming services will not have access to. Artists, such as Rihanna, Usher, Madonna and Beyonce have all aligned themselves to Tidal, with Jay-Z saying the platform was going to 'forever change the course of music history', 'allowing art to flourish'. Industry concerns However, not all artists are as keen on the idea. Lily Allen, in particular, was keen to point out potential legal implications, saying on twitter that the service could be counter-productive in terms of encouraging piracy as the $20 a month fee could make the music content on Tidal less accessible to fans of all demographics. She tweeted to her 5.11m followers: 'He's (Jay-Z) taken the biggest artists &amp; made them exclusive to TIDAL (am I right in thinking this?), people are going to swarm back to pirate sites in droves sending traffic to torrent sites. Up and coming (not yet millionaires) artists are going to suffer as a result. my concern is that Tidal may set emerging artists back.' Members of bands such as Mumford and Sons and Death Cab for Cutie have also voiced concerns over how this sort of service will affect emerging, independent and underground artists. Conclusion The effect of Tidal on the music industry is of course dependent on its success. After a brief spell in the US iPhone top-20 download chart, the app has now fallen out of the top 700; therefore its impact remains to be seen. Shoosmiths intellectual property team includes leading professional advisors who help businesses in the creative industries and provide specialist advice to those in the music industry. For more information about intellectual property matters, please get in touch. DisclaimerThis document is for informational purposes only and does not constitute legal advice. It is recommended that specific professional advice is sought before acting on any of the information given.Fri, 24 Apr 2015 00:00:00 +0100<![CDATA[Laura Harper ]]><![CDATA[ On 26 April, World Intellectual Property Day will celebrate music with the aim of promoting discussion of the role of IP in encouraging innovation and creativity. As a part of this, there will be discussions across the globe exploring some of the challenges and subsequent changes shaping the music industry today. A key change in the music industry One of the key changes in recent years has been the way that we can access music. Streaming has becoming one of the most popular ways to access music with 60 million users signed up to industry leader Spotify. However, many artists didn't feel that letting the general public listen to their music for free was fair on the artist. With this in mind, last month, American rapper and producer, Jay Z, launched a rival platform called 'Tidal' - with the view that through this service (with no 'free' option), artists would be paid for their work. At $20-per-month, Tidal promises exclusive content and videos that other streaming services will not have access to. Artists, such as Rihanna, Usher, Madonna and Beyonce have all aligned themselves to Tidal, with Jay-Z saying the platform was going to 'forever change the course of music history', 'allowing art to flourish'. Industry concerns However, not all artists are as keen on the idea. Lily Allen, in particular, was keen to point out potential legal implications, saying on twitter that the service could be counter-productive in terms of encouraging piracy as the $20 a month fee could make the music content on Tidal less accessible to fans of all demographics. She tweeted to her 5.11m followers: 'He's (Jay-Z) taken the biggest artists &amp; made them exclusive to TIDAL (am I right in thinking this?), people are going to swarm back to pirate sites in droves sending traffic to torrent sites. Up and coming (not yet millionaires) artists are going to suffer as a result. my concern is that Tidal may set emerging artists back.' Members of bands such as Mumford and Sons and Death Cab for Cutie have also voiced concerns over how this sort of service will affect emerging, independent and underground artists. Conclusion The effect of Tidal on the music industry is of course dependent on its success. After a brief spell in the US iPhone top-20 download chart, the app has now fallen out of the top 700; therefore its impact remains to be seen. Shoosmiths intellectual property team includes leading professional advisors who help businesses in the creative industries and provide specialist advice to those in the music industry. For more information about intellectual property matters, please get in touch. DisclaimerThis document is for informational purposes only and does not constitute legal advice. It is recommended that specific professional advice is sought before acting on any of the information given.]]>{090CA124-1D7E-409C-A631-2CE9B69F6B7F}https://www.shoosmiths.co.uk/news/press-releases/shoosmiths-partner-wins-national-client-choice-award-9306.aspxShoosmiths partner wins national Client Choice Award National law firm Shoosmiths is celebrating a national award win for client service after IP partner, Gary Assim, was named the UK's 'Intellectual Property - Copyright' winner - for the second consecutive year - at the Client Choice Awards, 2015. Gary Assim, Shoosmiths Gary is national head of the intellectual property &amp; creative industry group as well as leading the retail sector group and has built a strong reputation, acting for high profile clients such as Chloe, Jimmy Choo and Doc Martens. Established in 2005, the Client Choice awards recognise those partners around the world that stand apart for the excellent client service they provide. The criteria for the awards focus on the ability to add real value to clients' business above and beyond other players in the market. Uniquely, these awards survey senior corporate counsel only, with this year's winners chosen from a pool of more than 2,000 individual client assessments. Client Choice research began with a readership survey of International Law Office (ILO) and Lexology in-house counsel subscribers. Clients were then asked to rate individual lawyers and law firms on the following client service criteria: quality of legal advice, value for money, commercial awareness, effective communication, billing transparency, tailored fee structures, response time, sharing of expertise and use of technology. Shoosmiths' Gary Assim, said: 'I am delighted to have been awarded this accolade by Client Choice and am grateful to my clients who sent in their feedback. The firm's reputation for delivering exceptional client service has come about through really listening to the client and working with them to find a better way of delivering advice, saving them time and money. Many firms talk about client service; but I guess you could say it is in Shoosmiths' DNA.' Clients said of Gary Assim: 'He is undeniably very skilled in his craft.''He has a natural authority when he speaks and gets the attention of the people he talks to - even that of opposing counsel.' 'The advice that Gary generates is always communicated in clear, easy-to-understand language that I - as a non expert - can always understand.' 'Gary has consistently provided an excellent-quality service to our business, no matter what challenges we put to him.' Client Choice is a free, fully searchable online resource for senior corporate counsel that profiles the best law firms and partners around the world for client service. Drawing on more than 10 years of research carried out for the Client Choice Awards, Client Choice now offers direct feedback from clients on more than 1,000 of the best legal service providers in over 50 jurisdictions. This year, Client Choice recognise 414 winners across 68 jurisdictions worldwide. Gary's award win follows hot on the heels of the firm coming second overall in Legal Week's Client Satisfaction Survey, and Shoosmiths commercial partner, David Jackson, recently winning Legal Week's Client Partner of the Year Award at the British Legal Awards. Thu, 26 Feb 2015 00:00:00 Z<![CDATA[Gary Assim ]]><![CDATA[ National law firm Shoosmiths is celebrating a national award win for client service after IP partner, Gary Assim, was named the UK's 'Intellectual Property - Copyright' winner - for the second consecutive year - at the Client Choice Awards, 2015. Gary Assim, Shoosmiths Gary is national head of the intellectual property &amp; creative industry group as well as leading the retail sector group and has built a strong reputation, acting for high profile clients such as Chloe, Jimmy Choo and Doc Martens. Established in 2005, the Client Choice awards recognise those partners around the world that stand apart for the excellent client service they provide. The criteria for the awards focus on the ability to add real value to clients' business above and beyond other players in the market. Uniquely, these awards survey senior corporate counsel only, with this year's winners chosen from a pool of more than 2,000 individual client assessments. Client Choice research began with a readership survey of International Law Office (ILO) and Lexology in-house counsel subscribers. Clients were then asked to rate individual lawyers and law firms on the following client service criteria: quality of legal advice, value for money, commercial awareness, effective communication, billing transparency, tailored fee structures, response time, sharing of expertise and use of technology. Shoosmiths' Gary Assim, said: 'I am delighted to have been awarded this accolade by Client Choice and am grateful to my clients who sent in their feedback. The firm's reputation for delivering exceptional client service has come about through really listening to the client and working with them to find a better way of delivering advice, saving them time and money. Many firms talk about client service; but I guess you could say it is in Shoosmiths' DNA.' Clients said of Gary Assim: 'He is undeniably very skilled in his craft.''He has a natural authority when he speaks and gets the attention of the people he talks to - even that of opposing counsel.' 'The advice that Gary generates is always communicated in clear, easy-to-understand language that I - as a non expert - can always understand.' 'Gary has consistently provided an excellent-quality service to our business, no matter what challenges we put to him.' Client Choice is a free, fully searchable online resource for senior corporate counsel that profiles the best law firms and partners around the world for client service. Drawing on more than 10 years of research carried out for the Client Choice Awards, Client Choice now offers direct feedback from clients on more than 1,000 of the best legal service providers in over 50 jurisdictions. This year, Client Choice recognise 414 winners across 68 jurisdictions worldwide. Gary's award win follows hot on the heels of the firm coming second overall in Legal Week's Client Satisfaction Survey, and Shoosmiths commercial partner, David Jackson, recently winning Legal Week's Client Partner of the Year Award at the British Legal Awards. ]]>{06FBA2BF-6620-4D65-AD0F-F49BA3D812FD}https://www.shoosmiths.co.uk/client-resources/legal-updates/contractual-terms-protect-database-practical-alternative-copyright-9083.aspxContractual terms to protect your database - a practical alternative to copyright The Court of Justice of the European Union (CJEU) has handed down a ruling that may significantly affect owners of databases of information who wish to restrict how their data is used and those who make use of such databases. The CJEU has ruled that the owner of a database can contractually limit the use of the database if it does not fall within the statutory protection given by the Database Directive. The Database Directive Under the Directive, a lawful user of a database can use it for what would otherwise be 'restricted acts' (such as reproducing, translating, distributing or communicating to the public the contents of the database) that are necessary for the purposes of access to the contents of the database and provided that they constitute 'normal use'. In addition, where a database is made available to the public (e.g. on a website), the database owner can't prevent a lawful user from extracting or reusing insubstantial parts of the database provided that it is a 'normal exploitation' of the database and does not prejudice the database owner's legitimate interests or prejudice their rights as copyright owner. Article 15 of the Database Directive specifically stops a database owner from putting anything in their terms and conditions that stops this and says that any such terms and conditions will be void. The ruling In the case between Ryanair and Dutch company PR Aviation which resulted in the recent ruling, PR Aviation ran a price comparison website allowing users to compare and then book low cost flights without ever visiting the airline's own website. They had obtained the price and flight data from Ryanair's website, which terms and conditions stated that any price comparison websites should enter into a licence of Ryanair's database of flight price and timetable information. PR Aviation had not done this. Ryanair brought a claim for infringement of its rights in its flight information data, as well as for breach of the website terms and conditions. Proceedings were referred to the CJEU, asking whether the Directive (and in particular the provisions preventing contractual limitations) extend to databases which are not protected by copyright or by database right. The CJEU ruled that they do not, and that databases which fall outside of the Directive can contractually restrict users in a way owners of protected databases cannot. When does a database fall within the Directive? A database is defined as 'a collection of independent works, data or other materials arranged in a systematic or methodical way and accessible by electronic or other means'. In this case the database was a website containing flight information. A database will be protected by copyright if, by reason of the selection or arrangement of its contents, the database constitutes the owners own original work. The bar for originality is low, and the Directive has clarified that the copyright protects the structure of the database, rather than the data itself. Database right exists independently of copyright and protects the compilation of information itself. It will apply when there has been a 'substantial investment in obtaining, verifying or presenting the contents of the database'. Because of the requirement of 'substantial investment', companies who create a database using their own data will not likely not be protected by database right, unless they made more investment in the database then just creating or collecting the data. What does this mean? If the data is not therefore protected by copyright or database right (for example because it consists of the database creators own data and no extra investment has been made in compiling the data) then this decision will apply, and the database owner will be able to contractually limit what its lawful users do with the data. This could be very relevant to both database owners and users alike, and in particular as in this case to price comparison businesses, businesses who sell third party products or services directly to consumers, and indeed businesses whose goods and services are sold by third parties. Owners of a database that does not fall within the scope of protection of the Directive will have contractual means to control their data, meaning that they could make it difficult for the likes of price comparison websites by restricting their ability to make use of data without a licence or potentially at all. Such businesses will need clarity on whether their database falls within the Directive in order to be clear on what they can limit users from doing in their terms and conditions. What should I do? The value of databases can be easily overlooked but sensible technical and practical measures (encryption, password protection, limiting access) should be taken to protect valuable datasets Ensure that databases are regularly maintained - the duration of database right, if it exists, will be refreshed every time a substantial update is made to the content Make sure that any database or dataset you make available, whether on a one-off basis or the whole world via a website, has a copyright notice attached and is protected by contractual terms of use to which the user is clearly directed DisclaimerThis document is for informational purposes only and does not constitute legal advice. It is recommended that specific professional advice is sought before acting on any of the information given. Wed, 28 Jan 2015 00:00:00 Z<![CDATA[ The Court of Justice of the European Union (CJEU) has handed down a ruling that may significantly affect owners of databases of information who wish to restrict how their data is used and those who make use of such databases. The CJEU has ruled that the owner of a database can contractually limit the use of the database if it does not fall within the statutory protection given by the Database Directive. The Database Directive Under the Directive, a lawful user of a database can use it for what would otherwise be 'restricted acts' (such as reproducing, translating, distributing or communicating to the public the contents of the database) that are necessary for the purposes of access to the contents of the database and provided that they constitute 'normal use'. In addition, where a database is made available to the public (e.g. on a website), the database owner can't prevent a lawful user from extracting or reusing insubstantial parts of the database provided that it is a 'normal exploitation' of the database and does not prejudice the database owner's legitimate interests or prejudice their rights as copyright owner. Article 15 of the Database Directive specifically stops a database owner from putting anything in their terms and conditions that stops this and says that any such terms and conditions will be void. The ruling In the case between Ryanair and Dutch company PR Aviation which resulted in the recent ruling, PR Aviation ran a price comparison website allowing users to compare and then book low cost flights without ever visiting the airline's own website. They had obtained the price and flight data from Ryanair's website, which terms and conditions stated that any price comparison websites should enter into a licence of Ryanair's database of flight price and timetable information. PR Aviation had not done this. Ryanair brought a claim for infringement of its rights in its flight information data, as well as for breach of the website terms and conditions. Proceedings were referred to the CJEU, asking whether the Directive (and in particular the provisions preventing contractual limitations) extend to databases which are not protected by copyright or by database right. The CJEU ruled that they do not, and that databases which fall outside of the Directive can contractually restrict users in a way owners of protected databases cannot. When does a database fall within the Directive? A database is defined as 'a collection of independent works, data or other materials arranged in a systematic or methodical way and accessible by electronic or other means'. In this case the database was a website containing flight information. A database will be protected by copyright if, by reason of the selection or arrangement of its contents, the database constitutes the owners own original work. The bar for originality is low, and the Directive has clarified that the copyright protects the structure of the database, rather than the data itself. Database right exists independently of copyright and protects the compilation of information itself. It will apply when there has been a 'substantial investment in obtaining, verifying or presenting the contents of the database'. Because of the requirement of 'substantial investment', companies who create a database using their own data will not likely not be protected by database right, unless they made more investment in the database then just creating or collecting the data. What does this mean? If the data is not therefore protected by copyright or database right (for example because it consists of the database creators own data and no extra investment has been made in compiling the data) then this decision will apply, and the database owner will be able to contractually limit what its lawful users do with the data. This could be very relevant to both database owners and users alike, and in particular as in this case to price comparison businesses, businesses who sell third party products or services directly to consumers, and indeed businesses whose goods and services are sold by third parties. Owners of a database that does not fall within the scope of protection of the Directive will have contractual means to control their data, meaning that they could make it difficult for the likes of price comparison websites by restricting their ability to make use of data without a licence or potentially at all. Such businesses will need clarity on whether their database falls within the Directive in order to be clear on what they can limit users from doing in their terms and conditions. What should I do? The value of databases can be easily overlooked but sensible technical and practical measures (encryption, password protection, limiting access) should be taken to protect valuable datasets Ensure that databases are regularly maintained - the duration of database right, if it exists, will be refreshed every time a substantial update is made to the content Make sure that any database or dataset you make available, whether on a one-off basis or the whole world via a website, has a copyright notice attached and is protected by contractual terms of use to which the user is clearly directed DisclaimerThis document is for informational purposes only and does not constitute legal advice. It is recommended that specific professional advice is sought before acting on any of the information given. ]]>{5BF75A97-91F6-4EF3-AD9E-EE5CAFFD1958}https://www.shoosmiths.co.uk/client-resources/legal-updates/rihanna-retains-passing-off-victory-against-topshop-9055.aspxRihanna retains &#39;passing-off&#39; victory against Topshop In 2013 global pop sensation Rihanna took legal action against the retail giant and its parent company Arcadia Group Brands Ltd, for using an image of her on a t-shirt and succeeded in the High Court with her claim of passing-off. We wrote about Rihanna's legal victory over Topshop in 2013 when they appealed against its defeat but in a unanimous decision three members of the Court of Appeal have ruled that the High Court Judge who decided the case was correct to side with Rihanna. High fashion in the High Court The original High Court decision of Mr Justice Birss caused some controversy, primarily because of its glamorous subject matter as opposed to the legal details of the case. Despite finding in Rihanna's favour, the Judge was at pains to point out that no new law was being developed as a result of his findings. Unlike other jurisdictions (including many US states) there is no such thing in English law as 'image rights'. In some jurisdictions it is possible for celebrities to rely on extensive statutory protection for their personal brand covering everything from their voice to their signature. In Guernsey it is possible to register such rights. However, in the UK the courts have refused to extend the law to prevent the use of a celebrity's image if they consider that the use is simply fair competition without misrepresentation. In the UK celebrities may be able to use existing law to protect their images and reputations in certain circumstances. In their well known claim against Hello! Magazine, Michael Douglas and Catherine Zeta-Jones persuaded the High Court that Hello!'s publication of photographs taken without consent at their wedding was a breach of confidence and they were awarded substantial damages. Celebrities who are out to leverage their famous names may also use trade mark or copyright law to pursue third parties taking unfair advantage of their personas. Rihanna relied on passing-off in her claim against Topshop, following the precedent set by Formula One driver, Eddie Irvine in his victory over commercial radio station Talksport in 2003. Irvine argued that a photograph of him, which had been doctored to show him holding a Talksport Radio, was calculated to amount to a false endorsement. The High Court agreed and awarded Mr Irvine damages of £25,000. It was important to the success of his case that Mr Irvine could demonstrate that he was in the business of giving endorsements, for significant sums of money and that the public were likely to be mislead by the photograph into believing that he had endorsed Talksport. Rihanna's fashionable persona In order to succeed in her claim of passing off, Rihanna's legal team had to demonstrate that she had passed a three stage test. Firstly she had to demonstrate goodwill in the relevant field, secondly she had to show that there was a misrepresentation to the public and finally there must be some identifiable damage. The Court of Appeal has upheld Mr Justice Birss' finding that Rihanna's case met all stages of the test for passing-off. Rihanna, the Judge found, enjoys considerable goodwill in the world of fashion and fashion retail. Despite it being outside of her primary business interests, Rihanna had engaged in calculated efforts in the world of fashion and her collaborations with other high street stores in the UK (notably River Island), meant that her personal brand was (and is) a marketable commodity in UK fashion. In its appeal Topshop's lawyers argued that the High Court Judge had applied the legal tests as if to a case of false merchandising (which this was not) rather than one of false endorsement. The Court of Appeal rejected this suggestion finding that the judge had properly considered whether the relevant public were likely to buy the garment thinking that Rihanna had approved it and he was entitled to find that was the case. It was important to this finding that the image used by Topshop was strikingly similar to the picture used on the front of Rihanna's 'Talk That Talk' album making it appear like an authorised image. Topshop's previous deliberate efforts to associate its brand with Rihanna, largely via social media, were also crucial to the finding that there was a misrepresentation to the public. The final stage of the passing-off test was met as the judge found that Rihanna had suffered damage, both in terms of the lost fees she could have charged for her endorsement but also damage in terms of her loss of control over her (limited) rights to her personal goodwill and image in the market. Setting styles but not precedents Although this case has caused much interest in the possible extent of the law of passing-off, its real contribution has been to demonstrating how narrow the law is when applied to the image of an individual. The first 62 paragraphs of the 64 paragraph Court of Appeal judgment is taken up with Lord Justice Kitchen's analysis, but possibly the most important statement in the judgment is in the single paragraph penned by Lord Justice Underhill who noted 'I am bound to say that I regard this case as close to the borderline.' The combination of factors weighing in Rihanna's favour here was crucial. Had Rihanna not had a past public relationship with Topshop and had the image used not been so similar to that used on her album cover, Rihanna's claim would have failed. In future, unless there is a real likelihood that consumers will believe something is endorsed by a celebrity when it is not, it is unlikely that the law of passing-off will be of much assistance to those in the UK looking to prevent third parties from riding on the coattails of their name and personal brand. DisclaimerThis document is for informational purposes only and does not constitute legal advice. It is recommended that specific professional advice is sought before acting on any of the information given. Mon, 26 Jan 2015 00:00:00 Z<![CDATA[Gary Assim ]]><![CDATA[ In 2013 global pop sensation Rihanna took legal action against the retail giant and its parent company Arcadia Group Brands Ltd, for using an image of her on a t-shirt and succeeded in the High Court with her claim of passing-off. We wrote about Rihanna's legal victory over Topshop in 2013 when they appealed against its defeat but in a unanimous decision three members of the Court of Appeal have ruled that the High Court Judge who decided the case was correct to side with Rihanna. High fashion in the High Court The original High Court decision of Mr Justice Birss caused some controversy, primarily because of its glamorous subject matter as opposed to the legal details of the case. Despite finding in Rihanna's favour, the Judge was at pains to point out that no new law was being developed as a result of his findings. Unlike other jurisdictions (including many US states) there is no such thing in English law as 'image rights'. In some jurisdictions it is possible for celebrities to rely on extensive statutory protection for their personal brand covering everything from their voice to their signature. In Guernsey it is possible to register such rights. However, in the UK the courts have refused to extend the law to prevent the use of a celebrity's image if they consider that the use is simply fair competition without misrepresentation. In the UK celebrities may be able to use existing law to protect their images and reputations in certain circumstances. In their well known claim against Hello! Magazine, Michael Douglas and Catherine Zeta-Jones persuaded the High Court that Hello!'s publication of photographs taken without consent at their wedding was a breach of confidence and they were awarded substantial damages. Celebrities who are out to leverage their famous names may also use trade mark or copyright law to pursue third parties taking unfair advantage of their personas. Rihanna relied on passing-off in her claim against Topshop, following the precedent set by Formula One driver, Eddie Irvine in his victory over commercial radio station Talksport in 2003. Irvine argued that a photograph of him, which had been doctored to show him holding a Talksport Radio, was calculated to amount to a false endorsement. The High Court agreed and awarded Mr Irvine damages of £25,000. It was important to the success of his case that Mr Irvine could demonstrate that he was in the business of giving endorsements, for significant sums of money and that the public were likely to be mislead by the photograph into believing that he had endorsed Talksport. Rihanna's fashionable persona In order to succeed in her claim of passing off, Rihanna's legal team had to demonstrate that she had passed a three stage test. Firstly she had to demonstrate goodwill in the relevant field, secondly she had to show that there was a misrepresentation to the public and finally there must be some identifiable damage. The Court of Appeal has upheld Mr Justice Birss' finding that Rihanna's case met all stages of the test for passing-off. Rihanna, the Judge found, enjoys considerable goodwill in the world of fashion and fashion retail. Despite it being outside of her primary business interests, Rihanna had engaged in calculated efforts in the world of fashion and her collaborations with other high street stores in the UK (notably River Island), meant that her personal brand was (and is) a marketable commodity in UK fashion. In its appeal Topshop's lawyers argued that the High Court Judge had applied the legal tests as if to a case of false merchandising (which this was not) rather than one of false endorsement. The Court of Appeal rejected this suggestion finding that the judge had properly considered whether the relevant public were likely to buy the garment thinking that Rihanna had approved it and he was entitled to find that was the case. It was important to this finding that the image used by Topshop was strikingly similar to the picture used on the front of Rihanna's 'Talk That Talk' album making it appear like an authorised image. Topshop's previous deliberate efforts to associate its brand with Rihanna, largely via social media, were also crucial to the finding that there was a misrepresentation to the public. The final stage of the passing-off test was met as the judge found that Rihanna had suffered damage, both in terms of the lost fees she could have charged for her endorsement but also damage in terms of her loss of control over her (limited) rights to her personal goodwill and image in the market. Setting styles but not precedents Although this case has caused much interest in the possible extent of the law of passing-off, its real contribution has been to demonstrating how narrow the law is when applied to the image of an individual. The first 62 paragraphs of the 64 paragraph Court of Appeal judgment is taken up with Lord Justice Kitchen's analysis, but possibly the most important statement in the judgment is in the single paragraph penned by Lord Justice Underhill who noted 'I am bound to say that I regard this case as close to the borderline.' The combination of factors weighing in Rihanna's favour here was crucial. Had Rihanna not had a past public relationship with Topshop and had the image used not been so similar to that used on her album cover, Rihanna's claim would have failed. In future, unless there is a real likelihood that consumers will believe something is endorsed by a celebrity when it is not, it is unlikely that the law of passing-off will be of much assistance to those in the UK looking to prevent third parties from riding on the coattails of their name and personal brand. DisclaimerThis document is for informational purposes only and does not constitute legal advice. It is recommended that specific professional advice is sought before acting on any of the information given. ]]>{5348F128-887D-444B-B0F0-C9F9BD6B0F3D}https://www.shoosmiths.co.uk/client-resources/legal-updates/google-ad-words-new-online-threat-for-brand-owners-8675.aspxCourt of Appeal Google Ad-words decision may herald a new online threat for brand owners The dispute between Marks & Spencer and Interflora has taken a new turn with a Court of Appeal overturning the previous High Court ruling that M&S had infringed Interflora's trade mark rights in its name by purchasing and using it as a Google Ad-Word. The Google Ad-Words service allows advertisers to bid for and purchase certain key words ('Ad-Words') for a fee meaning that when a Google user types the word into the search engine the advertiser's sponsored advertisements will be returned in a dedicated box above the organic results on the Google results page. Controversially Google amended its Ad-Words policy in 2008 to allow advertisers to bid for competitors' trade marks as Ad-Words. M&amp;S eagerly took advantage of this policy change to bid for Ad-Words incorporating the trade marks of a number of competitors, including Interflora. The High Court decision Mr Justice Arnold delivered a series of High Court judgments dealing with the issues in the case, the costs awarded to Interflora and the scope of the injunction granted against M&amp;S. In his main judgment Arnold J held that 'the M &amp; S advertisements which are the subject of Interflora's claim did not enable reasonably well-informed and reasonably attentive internet users, or enabled them only with difficulty, to ascertain whether the service referred to in the advertisements originated from the proprietor or an undertaking economically connected with it, or originated from a third party...Thus M &amp; S's use of the Signs [the Google Ad-Words] has had an adverse effect on the origin function of the Trade Marks.' Trade Marks must be functional as well as fun The origin function of a trade mark demonstrates to consumers the origins of the goods or services to which the trade mark is attached (e.g. the 'Golden Arches' identify a Big Mac as coming from McDonalds and the 'swoosh' symbol identifies a pair of trainers as being made by Nike). It is generally considered that the origin function of a trade mark is its most important function. Damage to one of the recognised functions of a trade mark must be demonstrated by the owner in order to win a claim of trade mark infringement in court. In cases where similar but not identical signs are used a trade mark holder must also demonstrate that there is likelihood that a reasonably well informed and attentive public will be confused as to the origin of the relevant goods and services as a result. The Court of Appeal gets critical M&amp;S appealed against the High Court ruling to the Court of Appeal. Throughout its 198 paragraph judgment the Court of Appeal emphasised that the use of a trade mark as a key word that was not owned by the advertiser is not inherently unfair and will not amount to trade mark infringement in most circumstances, rather it should be viewed as a fair form of competition. The Court of Appeal considered the arguments put by M&amp;S in turn and concluded that the Judge had erred in his reasoning on a number of matters: Arnold J had held that the onus lies with a third party advertiser to show that its use of a sign similar to a trade mark is sufficiently clear that there will be no risk of confusion on the part of the average consumer as to the origin of the advertised goods or services. The Court of Appeal has found this reasoning to be in error as it effectively reverses the burden of proof. It must be for the trade mark holder to show that there is a likelihood of confusion leading to damage to his trade mark rights The Court of Appeal found that Arnold J had introduced the doctrine of 'initial interest' confusion into his analysis. This concept, arising in US law was described by the Court of Appeal as "highly controversial". The doctrine relates to confusion as to the origin of goods and/or services prior to purchase and generally where used in advertising. The Court of Appeal found that the application of the doctrine could conflict with the already clear rules that the Court of Justice of the European Union has established for determining confusion and risked imposing a duty on advertisers to actively avoid confusion that does not exist under current trade mark law Much has been made of Arnold J's conclusion that internet literacy had increased in the preceding the past five years - he held that the majority of internet users had come to understand the distinction between sponsored and natural search results but found that in this case there was still a likelihood of confusion. The Court of Appeal decided that he placed too much emphasis on those users who did not appreciate the distinction and that he incorrectly relied on certain evidence over other evidence before him in doing so Back to the High Court After finding that the Judge may have ruled differently but for the errors discussed above the Court of Appeal allowed the appeal and considered ruling itself on whether there was infringement of Interflora's marks by M&amp;S. It decided however, that without the benefit of all of the evidence, including witness evidence, it would not be able to guarantee the correct decision on the facts. The case will instead return to be re-tried in the High Court. In the meantime, with initial interest confusion strongly out of favour with the courts, it is going to be increasingly difficult for trade mark owners to object to the use of their mark's in keyword advertising by competitors unless they can prove confusion beyond the initial view of the search engine results by consumers. Wed, 12 Nov 2014 00:00:00 Z<![CDATA[Anastasia Fowle ]]><![CDATA[ The dispute between Marks & Spencer and Interflora has taken a new turn with a Court of Appeal overturning the previous High Court ruling that M&S had infringed Interflora's trade mark rights in its name by purchasing and using it as a Google Ad-Word. The Google Ad-Words service allows advertisers to bid for and purchase certain key words ('Ad-Words') for a fee meaning that when a Google user types the word into the search engine the advertiser's sponsored advertisements will be returned in a dedicated box above the organic results on the Google results page. Controversially Google amended its Ad-Words policy in 2008 to allow advertisers to bid for competitors' trade marks as Ad-Words. M&amp;S eagerly took advantage of this policy change to bid for Ad-Words incorporating the trade marks of a number of competitors, including Interflora. The High Court decision Mr Justice Arnold delivered a series of High Court judgments dealing with the issues in the case, the costs awarded to Interflora and the scope of the injunction granted against M&amp;S. In his main judgment Arnold J held that 'the M &amp; S advertisements which are the subject of Interflora's claim did not enable reasonably well-informed and reasonably attentive internet users, or enabled them only with difficulty, to ascertain whether the service referred to in the advertisements originated from the proprietor or an undertaking economically connected with it, or originated from a third party...Thus M &amp; S's use of the Signs [the Google Ad-Words] has had an adverse effect on the origin function of the Trade Marks.' Trade Marks must be functional as well as fun The origin function of a trade mark demonstrates to consumers the origins of the goods or services to which the trade mark is attached (e.g. the 'Golden Arches' identify a Big Mac as coming from McDonalds and the 'swoosh' symbol identifies a pair of trainers as being made by Nike). It is generally considered that the origin function of a trade mark is its most important function. Damage to one of the recognised functions of a trade mark must be demonstrated by the owner in order to win a claim of trade mark infringement in court. In cases where similar but not identical signs are used a trade mark holder must also demonstrate that there is likelihood that a reasonably well informed and attentive public will be confused as to the origin of the relevant goods and services as a result. The Court of Appeal gets critical M&amp;S appealed against the High Court ruling to the Court of Appeal. Throughout its 198 paragraph judgment the Court of Appeal emphasised that the use of a trade mark as a key word that was not owned by the advertiser is not inherently unfair and will not amount to trade mark infringement in most circumstances, rather it should be viewed as a fair form of competition. The Court of Appeal considered the arguments put by M&amp;S in turn and concluded that the Judge had erred in his reasoning on a number of matters: Arnold J had held that the onus lies with a third party advertiser to show that its use of a sign similar to a trade mark is sufficiently clear that there will be no risk of confusion on the part of the average consumer as to the origin of the advertised goods or services. The Court of Appeal has found this reasoning to be in error as it effectively reverses the burden of proof. It must be for the trade mark holder to show that there is a likelihood of confusion leading to damage to his trade mark rights The Court of Appeal found that Arnold J had introduced the doctrine of 'initial interest' confusion into his analysis. This concept, arising in US law was described by the Court of Appeal as "highly controversial". The doctrine relates to confusion as to the origin of goods and/or services prior to purchase and generally where used in advertising. The Court of Appeal found that the application of the doctrine could conflict with the already clear rules that the Court of Justice of the European Union has established for determining confusion and risked imposing a duty on advertisers to actively avoid confusion that does not exist under current trade mark law Much has been made of Arnold J's conclusion that internet literacy had increased in the preceding the past five years - he held that the majority of internet users had come to understand the distinction between sponsored and natural search results but found that in this case there was still a likelihood of confusion. The Court of Appeal decided that he placed too much emphasis on those users who did not appreciate the distinction and that he incorrectly relied on certain evidence over other evidence before him in doing so Back to the High Court After finding that the Judge may have ruled differently but for the errors discussed above the Court of Appeal allowed the appeal and considered ruling itself on whether there was infringement of Interflora's marks by M&amp;S. It decided however, that without the benefit of all of the evidence, including witness evidence, it would not be able to guarantee the correct decision on the facts. The case will instead return to be re-tried in the High Court. In the meantime, with initial interest confusion strongly out of favour with the courts, it is going to be increasingly difficult for trade mark owners to object to the use of their mark's in keyword advertising by competitors unless they can prove confusion beyond the initial view of the search engine results by consumers. ]]>{AF8D91C9-093F-4C9B-9EBA-61EF1A8B6CD5}https://www.shoosmiths.co.uk/client-resources/legal-updates/website-blocking-order-protect-trade-mark-holder-8611.aspxWebsite blocking order granted to protect trade mark holder The Richemont Group, owner of a number of luxury brands including Cartier, Montblanc and IWC, has secured a landmark website blocking order against the five main retail internet service providers (ISPs) in the UK (SKY, BT, EE, Talk Talk, and Virgin). Building upon the website blocking orders available to copyright holders, Richemont applied to the Court for orders requiring the ISPs to prevent subscribers' access to six websites (including www.cartierloveonline.com, and www.ukmontblancoutlet.co.uk) advertising and selling goods infringing Richemont's trade marks. Website blocking orders Website blocking orders are injunctions ordering the ISP to block, or at least impede, access by their subscribers to the target website(s) selling counterfeit goods. Such orders are attractive to rightholders as they circumvent the often futile route of pursuing highly evasive counterfeiters through the courts. The orders themselves are not a new concept. They have been successfully utilised by copyright holders for several years, through section 97A Copyright, Designs and Patents Act 1988, which deals specifically with injunctions against service providers. Making the orders available to trade mark holders seems logical progress. Indeed, it is perhaps surprising that it has taken until now for such orders to be granted. The delay is likely to be in part due to the fact that despite Article 11 of the Enforcement Directive directing Member States to 'ensure that rightholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe an intellectual property right', to date UK statute only makes specific reference to the availability of such orders to copyright holders, leaving a gap to be bridged. ISPs have been understandably reluctant to concede that such relief should be granted to rightholders. Until now there has not been a sufficiently well resourced player with a significant interest in the outcome, to take on such formidable opponents in relatively ambiguous legal territory. Securing a website blocking order - in a trade mark case There are four threshold conditions a trade mark holder must meet in order to secure a website blocking order, they are not overly onerous. The Court must be satisfied that: The ISP is an intermediary within the meaning of Article 11 of the Enforcement Directive (i.e. their services are used by a third party to infringe an IP right) The users and/or operator of the target website are infringing the claimant's trade mark The users and/or operator of the target website are using the ISP's services to infringe the claimant's trade mark (i.e. that the infringing websites are accessed via the ISP's services); and The ISP has actual knowledge of the infringement The Court must also be satisfied that it would be proportionate to grant the order. In doing so it will consider: The comparative importance of the claimant's trade mark rights versus the ISP's freedom to carry on business and internet users' freedom to receive information The availability and suitability of alternative measures to combat the infringement The likely effect of the order, and in particular whether it would seriously discourage the ISP's subscribers from accessing the target website The costs associated with the order, and in particular the costs to the ISP of implementing the order The impact the order would have on lawful users of the internet; and The substitutability of the target website Whilst proportionality will be tested on a case-by-case basis, unless there is a real shift in the effectiveness of the orders versus the cost of implementing the measures, it appears likely that many, if not most, sensible applications will meet the requirement. Effectiveness Whilst it will remain possible for determined users to navigate their way around the website blocks, evidence surrounding the effectiveness of the section 97A orders suggests that the orders will be reasonably effective. Future It is expected that this ruling will be adopted by the other EC Member States; therefore, tightening trade mark protection across Europe. A rise in the number of website blocking orders based on trade mark registrations, rather than copyright is also anticipated as registered IP rights tend to be easier to enforce. Nevertheless, with the predicted cost of unopposed orders exceeding £10,000 per website, it is not thought likely that the there will be a flood of applications - rather it is expected that rightholders will concentrate their resources on the more egregious infringers. The judgment can be read in full here. DisclaimerThis document is for informational purposes only and does not constitute legal advice. It is recommended that specific professional advice is sought before acting on any of the information given. Wed, 05 Nov 2014 00:00:00 Z<![CDATA[Gary Assim ]]><![CDATA[ The Richemont Group, owner of a number of luxury brands including Cartier, Montblanc and IWC, has secured a landmark website blocking order against the five main retail internet service providers (ISPs) in the UK (SKY, BT, EE, Talk Talk, and Virgin). Building upon the website blocking orders available to copyright holders, Richemont applied to the Court for orders requiring the ISPs to prevent subscribers' access to six websites (including www.cartierloveonline.com, and www.ukmontblancoutlet.co.uk) advertising and selling goods infringing Richemont's trade marks. Website blocking orders Website blocking orders are injunctions ordering the ISP to block, or at least impede, access by their subscribers to the target website(s) selling counterfeit goods. Such orders are attractive to rightholders as they circumvent the often futile route of pursuing highly evasive counterfeiters through the courts. The orders themselves are not a new concept. They have been successfully utilised by copyright holders for several years, through section 97A Copyright, Designs and Patents Act 1988, which deals specifically with injunctions against service providers. Making the orders available to trade mark holders seems logical progress. Indeed, it is perhaps surprising that it has taken until now for such orders to be granted. The delay is likely to be in part due to the fact that despite Article 11 of the Enforcement Directive directing Member States to 'ensure that rightholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe an intellectual property right', to date UK statute only makes specific reference to the availability of such orders to copyright holders, leaving a gap to be bridged. ISPs have been understandably reluctant to concede that such relief should be granted to rightholders. Until now there has not been a sufficiently well resourced player with a significant interest in the outcome, to take on such formidable opponents in relatively ambiguous legal territory. Securing a website blocking order - in a trade mark case There are four threshold conditions a trade mark holder must meet in order to secure a website blocking order, they are not overly onerous. The Court must be satisfied that: The ISP is an intermediary within the meaning of Article 11 of the Enforcement Directive (i.e. their services are used by a third party to infringe an IP right) The users and/or operator of the target website are infringing the claimant's trade mark The users and/or operator of the target website are using the ISP's services to infringe the claimant's trade mark (i.e. that the infringing websites are accessed via the ISP's services); and The ISP has actual knowledge of the infringement The Court must also be satisfied that it would be proportionate to grant the order. In doing so it will consider: The comparative importance of the claimant's trade mark rights versus the ISP's freedom to carry on business and internet users' freedom to receive information The availability and suitability of alternative measures to combat the infringement The likely effect of the order, and in particular whether it would seriously discourage the ISP's subscribers from accessing the target website The costs associated with the order, and in particular the costs to the ISP of implementing the order The impact the order would have on lawful users of the internet; and The substitutability of the target website Whilst proportionality will be tested on a case-by-case basis, unless there is a real shift in the effectiveness of the orders versus the cost of implementing the measures, it appears likely that many, if not most, sensible applications will meet the requirement. Effectiveness Whilst it will remain possible for determined users to navigate their way around the website blocks, evidence surrounding the effectiveness of the section 97A orders suggests that the orders will be reasonably effective. Future It is expected that this ruling will be adopted by the other EC Member States; therefore, tightening trade mark protection across Europe. A rise in the number of website blocking orders based on trade mark registrations, rather than copyright is also anticipated as registered IP rights tend to be easier to enforce. Nevertheless, with the predicted cost of unopposed orders exceeding £10,000 per website, it is not thought likely that the there will be a flood of applications - rather it is expected that rightholders will concentrate their resources on the more egregious infringers. The judgment can be read in full here. DisclaimerThis document is for informational purposes only and does not constitute legal advice. It is recommended that specific professional advice is sought before acting on any of the information given. ]]>{5920D869-9034-4BE9-81B0-FF0D7C858403}https://www.shoosmiths.co.uk/client-resources/legal-updates/ip-court-awards-damages-in-performers-rights-case-8590.aspxUK IP Enterprise Court awards damages in performers rights case What was the issue? The song "Heartbroken" by British Producer T2 was released in 2007 featuring vocal recordings from Jodie Henderson known as Jodie Aysha (her stage name) through the record company All Around the World Recordings. Upon its release the track peaked at number 2 in the UK singles chart where it stayed for five weeks. It remained in the top 40 for 46 weeks. Ms Henderson recorded the track whilst visiting the producer T2 otherwise known as Tafazwa Tawinezvi in 2005 however the terms in respect of how the recording would be used were in dispute. T2 subsequently signed to 2NV. Ms Henderson was offered a fee of £1,500 for her performance by 2NV but rejected this. 2NV then provided the track to All Around the Word Recordings, who released it. Ms Henderson claimed that her consent was not given for the use of her vocal performance on the release. She received no record royalties for All Around the World Recording's release nor was she paid for her participation in the video, (which she said was filmed under protest) or for the use of her name on the record art work. Consequently Ms Henderson brought a claim against All Around the World Recordings for infringement of her performance rights. What are performers rights? Under the Copyright Designs and Patents Act 1988 a performer is granted certain economic rights and moral rights in respect of their performance. A performer is also entitled to equitable remuneration in respect of the exploitation of recordings of their performance. A performer's consent is required to make a recording of a live performance (which also includes a performance in a recording studio) and to exploit such performances. A performer also has various assignable property rights in relation to that recording of their performance including the right to copy that recording, to distribute that recording, to rent or lend that recording to the public or to make copies of that recording available to the public. The Act does not state that consent of a performer must be given in writing however it is good practice to obtain written consent so that there can be no argument as to the terms upon which consent was provided. Court proceedings The matter was heard by the Intellectual Property Enterprise Court which held that All Around the World Recordings had infringed Ms Henderson's performer's rights when copies of her performance were made and issued to the public without her consent. The court found that All Around the World Recordings, had known that Miss Henderson had not signed to 2NV and had not obtained consent directly therefore, they had known that she had not provided consent to either label to release the record. The court held that the fact that Miss Henderson had reluctantly appeared in a subsequent video for the track and entered into discussions about the release did not mean that she consented to the release before any terms of payment to her had been agreed. As a result of this finding Ms Henderson elected for an enquiry as to damages. What was the outcome? The Court at an enquiry as to damages in October 2014, applied damages under the Directive on the Enforcement of Intellectual Property rights (2004/48/EC) ('the Directive'). Article 13 states that where an infringer knowingly or with reasonable grounds to know engages in infringing activities then the damages awarded should be either : appropriate to the actual prejudice suffered by the claimant due to the infringement, taking into account lost profits suffered by the injured party, unfair profits made by the infringer and if appropriate moral prejudice caused to the claimant; or on the basis of the royalties and fees which would have been due if the infringer had obtained a licence to use the IP right in question, often referred to as the user principle Article 13 has been implemented by regulation 3 of the IP (Enforcement) Regulations 2006 in the UK. Ms Henderson was awarded damages of £30,000 based on the 6% royalties which the court considered would have been agreed between her and All Around the World Recordings, plus a further £5,000 relating to her loss of reputation for not being able to promote her name, which provided unfair profit to All Around the World Recordings as she was not compensated by it for her loss of promotion of her name on the release. This case is important as the judge clarified how the Directive should be applied and also considered unfair profits and moral prejudice which had not been considered in UK law before. The latter might occur when a claimant has suffered little or no financial loss and would not otherwise be compensated. This case further clarified that a claimant retains the right to elect between an enquiry as to damages or an account of profits, it cannot do both. What lessons can be learnt from this case? Although not a legal requirement, when working with a singer, musician or other performer it is prudent to put a written performer's consent agreement in place which is signed by the performer. A well drafted performer's consent form will clearly set out what consent has been provided and the terms upon which such consent is given. This will provide protection for both the performer and the rights holder. How can we help? For advice on all performers' rights issues, drafting of performer's consent forms or advice on copyright or any other music agreements including recording, publishing, management and producer agreements please contact Carol Isherwood: carol.isherwood@shoosmiths.co.uk or 03700 865882. DisclaimerThis document is for informational purposes only and does not constitute legal advice. It is recommended that specific professional advice is sought before acting on any of the information given.Mon, 03 Nov 2014 00:00:00 Z<![CDATA[Carol Isherwood ]]><![CDATA[ What was the issue? The song "Heartbroken" by British Producer T2 was released in 2007 featuring vocal recordings from Jodie Henderson known as Jodie Aysha (her stage name) through the record company All Around the World Recordings. Upon its release the track peaked at number 2 in the UK singles chart where it stayed for five weeks. It remained in the top 40 for 46 weeks. Ms Henderson recorded the track whilst visiting the producer T2 otherwise known as Tafazwa Tawinezvi in 2005 however the terms in respect of how the recording would be used were in dispute. T2 subsequently signed to 2NV. Ms Henderson was offered a fee of £1,500 for her performance by 2NV but rejected this. 2NV then provided the track to All Around the Word Recordings, who released it. Ms Henderson claimed that her consent was not given for the use of her vocal performance on the release. She received no record royalties for All Around the World Recording's release nor was she paid for her participation in the video, (which she said was filmed under protest) or for the use of her name on the record art work. Consequently Ms Henderson brought a claim against All Around the World Recordings for infringement of her performance rights. What are performers rights? Under the Copyright Designs and Patents Act 1988 a performer is granted certain economic rights and moral rights in respect of their performance. A performer is also entitled to equitable remuneration in respect of the exploitation of recordings of their performance. A performer's consent is required to make a recording of a live performance (which also includes a performance in a recording studio) and to exploit such performances. A performer also has various assignable property rights in relation to that recording of their performance including the right to copy that recording, to distribute that recording, to rent or lend that recording to the public or to make copies of that recording available to the public. The Act does not state that consent of a performer must be given in writing however it is good practice to obtain written consent so that there can be no argument as to the terms upon which consent was provided. Court proceedings The matter was heard by the Intellectual Property Enterprise Court which held that All Around the World Recordings had infringed Ms Henderson's performer's rights when copies of her performance were made and issued to the public without her consent. The court found that All Around the World Recordings, had known that Miss Henderson had not signed to 2NV and had not obtained consent directly therefore, they had known that she had not provided consent to either label to release the record. The court held that the fact that Miss Henderson had reluctantly appeared in a subsequent video for the track and entered into discussions about the release did not mean that she consented to the release before any terms of payment to her had been agreed. As a result of this finding Ms Henderson elected for an enquiry as to damages. What was the outcome? The Court at an enquiry as to damages in October 2014, applied damages under the Directive on the Enforcement of Intellectual Property rights (2004/48/EC) ('the Directive'). Article 13 states that where an infringer knowingly or with reasonable grounds to know engages in infringing activities then the damages awarded should be either : appropriate to the actual prejudice suffered by the claimant due to the infringement, taking into account lost profits suffered by the injured party, unfair profits made by the infringer and if appropriate moral prejudice caused to the claimant; or on the basis of the royalties and fees which would have been due if the infringer had obtained a licence to use the IP right in question, often referred to as the user principle Article 13 has been implemented by regulation 3 of the IP (Enforcement) Regulations 2006 in the UK. Ms Henderson was awarded damages of £30,000 based on the 6% royalties which the court considered would have been agreed between her and All Around the World Recordings, plus a further £5,000 relating to her loss of reputation for not being able to promote her name, which provided unfair profit to All Around the World Recordings as she was not compensated by it for her loss of promotion of her name on the release. This case is important as the judge clarified how the Directive should be applied and also considered unfair profits and moral prejudice which had not been considered in UK law before. The latter might occur when a claimant has suffered little or no financial loss and would not otherwise be compensated. This case further clarified that a claimant retains the right to elect between an enquiry as to damages or an account of profits, it cannot do both. What lessons can be learnt from this case? Although not a legal requirement, when working with a singer, musician or other performer it is prudent to put a written performer's consent agreement in place which is signed by the performer. A well drafted performer's consent form will clearly set out what consent has been provided and the terms upon which such consent is given. This will provide protection for both the performer and the rights holder. How can we help? For advice on all performers' rights issues, drafting of performer's consent forms or advice on copyright or any other music agreements including recording, publishing, management and producer agreements please contact Carol Isherwood: carol.isherwood@shoosmiths.co.uk or 03700 865882. DisclaimerThis document is for informational purposes only and does not constitute legal advice. It is recommended that specific professional advice is sought before acting on any of the information given.]]>{BF3B7649-7E47-43E5-8A79-47B382CD53FD}https://www.shoosmiths.co.uk/news/press-releases/shoosmiths-supports-design-manchester-2014-8519.aspxShoosmiths supports Design Manchester 2014 National law firm Shoosmiths is backing this year's Design Manchester festival through its keynote industry address North: The Great Debate. Download hi-res image Now in its second year, Design Manchester is a week long festival of design from across the UK. Sponsored by Manchester City Council, the Design Council, the RSA and the Department for Culture. It is being held in Manchester Town Hall and in other venues across the city this week. Design Manchester celebrates creativity, collaboration and inclusivity in the worlds of art, design, illustration, animation and photography and seeks to both inspire and educate. The festival also takes place at the same time as Manchester Science festival and several events will overlap to help highlight the relationship between world-class design and science and technology. Curated by renowned graphic designer Malcolm Garrett of Images&amp;Co &amp; John Owens of Instruct, other participants include internationally renowned design luminaries such as Hollywood production designer Alex MacDowell, Peter Saville and Rejane Dall Bello. The festival will culminate in an industry debate on 29 October at Manchester School of Art's Stirling Prize-nominated Benzie Building, produced by Kasper de Graaf of Images&amp;Co. The invited audience will comprise key figures working in the design sphere in the north and throughout the country. The debate will focus on the topic of design and devolution and will examine how the creative industries are driving the regional economy. The panel chaired by The Observer's Robert Yates comprises Sir Richard Leese, leader of Manchester City Council, Lou Cordwell, CEO of digital design agency, Magnetic North, Caroline Norbury, Chief Executve of Creative England and Professor David Crow of Manchester School of Art. Laura Harper, partner and head of Manchester's IP &amp; Creative industries practice at Shoosmiths, said: 'Design Manchester 2014 and in particular North: The Great Debate brings together many of the businesses and professionals which make up the region's dynamic and active design sector and wider creative industries. Having supported these companies on regional, national and international projects over the years, I have seen diversification and innovation in businesses and service offerings during this time which have led directly to growth and job creation. 'We are delighted to be a part of this event together with many of our clients and contacts. The vibrant creative sector is key to the region's economy and debates like this one help to identify important issues and inform the best way forward for the sector as a whole. 'As a practice, in addition to providing excellent legal support we pride ourselves in our understanding of the sector and the issues faced by those within it. Our involvement in collaborative events like this debate helps us to keep this understanding current and fits in perfectly with the ethos of the practice which is to provide accessible, quality legal support to our clients in the creative industries and digital sector. 'That's why the team here at Shoosmiths is so proud to support this event and others like it in the city. We work closely with many of the city and region's leading creative and digital companies and are always ready to help and advise creative entrepreneurs.' Festival co-curator Malcolm Garrett RDI commented: 'It takes more than creative talent to build a vibrant creative industry. Manchester has always punched above its weight in its contribution to music, arts and culture, and one important reason is our willingness to cross boundaries. 'Shoosmiths have helped many creatives turn their talent into successful companies by contributing wider expertise and understanding of the business environment. They are a natural partner in this debate and we are delighted that they are supporting us.' Find out more about Design Manchester 14 here: www.designmcr.com and Shoosmiths here: www.shoosmiths.co.uk Laura Harper is a partner in Shoosmiths' national IP &amp; creative industries group and heads the team in the Manchester office. Immersed in the sector, she helps her clients to protect and commercialise the work they produce. She acts for a broad range of creative and digital businesses from multi-national technology companies, major fashion brands, communications agencies including advertising and design agencies, digital agencies and PR companies through to product design and manufacturing companies, film and TV production companies, music businesses, publishing, gaming and software businesses, arts organisations, individual designers, writers, artists and musicians. Laura divides her time between Shoosmiths' Manchester office at Spinningfields, in the heart of the city's business and finance district, and also the dedicated creative industries office at The Sharp Project, Manchester's multi-million pound creative digital media hub.Tue, 21 Oct 2014 00:00:00 +0100<![CDATA[Laura Harper ]]><![CDATA[ National law firm Shoosmiths is backing this year's Design Manchester festival through its keynote industry address North: The Great Debate. Download hi-res image Now in its second year, Design Manchester is a week long festival of design from across the UK. Sponsored by Manchester City Council, the Design Council, the RSA and the Department for Culture. It is being held in Manchester Town Hall and in other venues across the city this week. Design Manchester celebrates creativity, collaboration and inclusivity in the worlds of art, design, illustration, animation and photography and seeks to both inspire and educate. The festival also takes place at the same time as Manchester Science festival and several events will overlap to help highlight the relationship between world-class design and science and technology. Curated by renowned graphic designer Malcolm Garrett of Images&amp;Co &amp; John Owens of Instruct, other participants include internationally renowned design luminaries such as Hollywood production designer Alex MacDowell, Peter Saville and Rejane Dall Bello. The festival will culminate in an industry debate on 29 October at Manchester School of Art's Stirling Prize-nominated Benzie Building, produced by Kasper de Graaf of Images&amp;Co. The invited audience will comprise key figures working in the design sphere in the north and throughout the country. The debate will focus on the topic of design and devolution and will examine how the creative industries are driving the regional economy. The panel chaired by The Observer's Robert Yates comprises Sir Richard Leese, leader of Manchester City Council, Lou Cordwell, CEO of digital design agency, Magnetic North, Caroline Norbury, Chief Executve of Creative England and Professor David Crow of Manchester School of Art. Laura Harper, partner and head of Manchester's IP &amp; Creative industries practice at Shoosmiths, said: 'Design Manchester 2014 and in particular North: The Great Debate brings together many of the businesses and professionals which make up the region's dynamic and active design sector and wider creative industries. Having supported these companies on regional, national and international projects over the years, I have seen diversification and innovation in businesses and service offerings during this time which have led directly to growth and job creation. 'We are delighted to be a part of this event together with many of our clients and contacts. The vibrant creative sector is key to the region's economy and debates like this one help to identify important issues and inform the best way forward for the sector as a whole. 'As a practice, in addition to providing excellent legal support we pride ourselves in our understanding of the sector and the issues faced by those within it. Our involvement in collaborative events like this debate helps us to keep this understanding current and fits in perfectly with the ethos of the practice which is to provide accessible, quality legal support to our clients in the creative industries and digital sector. 'That's why the team here at Shoosmiths is so proud to support this event and others like it in the city. We work closely with many of the city and region's leading creative and digital companies and are always ready to help and advise creative entrepreneurs.' Festival co-curator Malcolm Garrett RDI commented: 'It takes more than creative talent to build a vibrant creative industry. Manchester has always punched above its weight in its contribution to music, arts and culture, and one important reason is our willingness to cross boundaries. 'Shoosmiths have helped many creatives turn their talent into successful companies by contributing wider expertise and understanding of the business environment. They are a natural partner in this debate and we are delighted that they are supporting us.' Find out more about Design Manchester 14 here: www.designmcr.com and Shoosmiths here: www.shoosmiths.co.uk Laura Harper is a partner in Shoosmiths' national IP &amp; creative industries group and heads the team in the Manchester office. Immersed in the sector, she helps her clients to protect and commercialise the work they produce. She acts for a broad range of creative and digital businesses from multi-national technology companies, major fashion brands, communications agencies including advertising and design agencies, digital agencies and PR companies through to product design and manufacturing companies, film and TV production companies, music businesses, publishing, gaming and software businesses, arts organisations, individual designers, writers, artists and musicians. Laura divides her time between Shoosmiths' Manchester office at Spinningfields, in the heart of the city's business and finance district, and also the dedicated creative industries office at The Sharp Project, Manchester's multi-million pound creative digital media hub.]]>{743D30C1-8E1E-4FA3-B3AC-F09B47368A6B}https://www.shoosmiths.co.uk/client-resources/legal-updates/shakira-song-in-copyright-infringement-claim-8370.aspxShakira song in copyright infringement claim Last month a USA court found that a hit song performed and co-written by Shakira was in fact copied from an earlier work. What happened? Shakira had previously collaborated with Dominican rapper El Cata on the song 'Loca'. The song, which sold over 5,000,000 copies worldwide, also featured on her album 'The Sun Comes Out'. Whilst Loca was based on an earlier version of a song written and recorded by El Cata, the court found that the earlier song had in fact been copied from Ramon Arias Vazquez's song called "Loca Con Su Tiguere", which was written in the 1990s, and therefore copyright infringement had taken place. The rights to Loca Con Su Tiguere are held by Mayimba Music and it was Mayimba which brought the claim against Sony, Shakira's publisher. Sony had distributed the song in both Spanish and English. Shakira is listed as songwriter of Loca along with El Cata and she is also credited as producer. The respective contributions of the song writers are not known. As Shakira wasn't a defendant does that mean she is off the hook? No, Shakira will probably have signed a publishing agreement with Sony and if that agreement is drafted on standard industry terms then it will contain a number of provisions which protect Sony in such situations. For example the agreement is likely to contain an indemnity which Sony is entitled to claim under in the event that a third party brings an intellectual property infringement claim in respect of any of the songs delivered by Shakira to Sony under the agreement. It would be usual to see a broad indemnity provision allowing a publisher to claim under an indemnity for all costs, losses, damages etc that it has incurred due to any such third party intellectual property claim. The agreement is also likely to contain warranties from Shakira that the songs she has provided/will provide to Sony under the agreement are original and do not infringe a third party's intellectual property rights. A warranty is a contractual promise which if breached means that the non-breaching party can claim damages for losses it has incurred due to such breach, from the other party. What could Shakira have done to protect herself? When collaborating with others it can be difficult to know if a collaborator's contribution is original. It is important therefore to put a written collaboration agreement in place with any collaborator which gives legal protection in the event of a third party intellectual property claim arising from the collaborator's contribution. It is recommended that the collaboration agreement contains warranties and indemnities from the collaborator. Under a collaboration agreement Shakira (in this case) would have been able to claim under the indemnities for her losses caused by her contributor's copyright infringement, to the extent that they are able to meet their liabilities under such an indemnity. How we can help For advice on all copyright issues, drafting of collaboration agreements, publishing agreements and any other music industry agreements please contact Carol Isherwood at carol.isherwood@shoosmiths.co.uk or 03700 865882. DisclaimerThis document is for informational purposes only and does not constitute legal advice. It is recommended that specific professional advice is sought before acting on any of the information given.Fri, 19 Sep 2014 00:00:00 +0100<![CDATA[Carol Isherwood ]]><![CDATA[ Last month a USA court found that a hit song performed and co-written by Shakira was in fact copied from an earlier work. What happened? Shakira had previously collaborated with Dominican rapper El Cata on the song 'Loca'. The song, which sold over 5,000,000 copies worldwide, also featured on her album 'The Sun Comes Out'. Whilst Loca was based on an earlier version of a song written and recorded by El Cata, the court found that the earlier song had in fact been copied from Ramon Arias Vazquez's song called "Loca Con Su Tiguere", which was written in the 1990s, and therefore copyright infringement had taken place. The rights to Loca Con Su Tiguere are held by Mayimba Music and it was Mayimba which brought the claim against Sony, Shakira's publisher. Sony had distributed the song in both Spanish and English. Shakira is listed as songwriter of Loca along with El Cata and she is also credited as producer. The respective contributions of the song writers are not known. As Shakira wasn't a defendant does that mean she is off the hook? No, Shakira will probably have signed a publishing agreement with Sony and if that agreement is drafted on standard industry terms then it will contain a number of provisions which protect Sony in such situations. For example the agreement is likely to contain an indemnity which Sony is entitled to claim under in the event that a third party brings an intellectual property infringement claim in respect of any of the songs delivered by Shakira to Sony under the agreement. It would be usual to see a broad indemnity provision allowing a publisher to claim under an indemnity for all costs, losses, damages etc that it has incurred due to any such third party intellectual property claim. The agreement is also likely to contain warranties from Shakira that the songs she has provided/will provide to Sony under the agreement are original and do not infringe a third party's intellectual property rights. A warranty is a contractual promise which if breached means that the non-breaching party can claim damages for losses it has incurred due to such breach, from the other party. What could Shakira have done to protect herself? When collaborating with others it can be difficult to know if a collaborator's contribution is original. It is important therefore to put a written collaboration agreement in place with any collaborator which gives legal protection in the event of a third party intellectual property claim arising from the collaborator's contribution. It is recommended that the collaboration agreement contains warranties and indemnities from the collaborator. Under a collaboration agreement Shakira (in this case) would have been able to claim under the indemnities for her losses caused by her contributor's copyright infringement, to the extent that they are able to meet their liabilities under such an indemnity. How we can help For advice on all copyright issues, drafting of collaboration agreements, publishing agreements and any other music industry agreements please contact Carol Isherwood at carol.isherwood@shoosmiths.co.uk or 03700 865882. DisclaimerThis document is for informational purposes only and does not constitute legal advice. It is recommended that specific professional advice is sought before acting on any of the information given.]]>{A83C1D33-154E-4B06-9052-EA35441B8636}https://www.shoosmiths.co.uk/client-resources/legal-updates/guide-for-commercial-users-and-rights-owners-8298.aspxOrphan Works - A guide for commercial users and rights owners The regulations relating to the licensing and use of orphan works will come into force in October this year. The regulations implement the European Directive on Orphan Works as adopted through the Enterprise and Regulatory Reform Act 2013 (the Act). You may recall that the Act provoked much debate when it received Royal Assent last year and it was quickly named the 'Instagram Act' as sections relating to copyright were compared to the former Instagram privacy policy which claimed rights in all photographs posted on Instagram. The regulations are particularly relevant given that increasingly, businesses use the internet to source content and the difficulty which this presents in identifying the authors of that content. Remind me, what are Orphan Works? Under the regulations, an orphan work is a work where, after a diligent search, one or more of the rights holders cannot be identified or located. By 'rights holders' we mean the owner of the copyright in the work. Tell me more Two statutory instruments will bring into force the new laws relating to orphan works and their use and licensing in October this year namely, The Copyrights and Rights in Performances (Licensing of Orphan Works) Regulation 2014 and the Copyrights and Rights in Performances (Certain Permitted Uses of Copyright Works) Regulation 2014 (the Regulations). As you will see from their names, the Regulations effectively create two sub-sets of orphan works. Firstly those licensed by the authorising body which will be the Intellectual Property Office (IPO) and secondly those whose use is permitted by certain cultural institutions such as libraries, museums or educational establishments. How do I know that the work is an orphan work? The regulations state that a reasonable search of the relevant sources must be undertaken in order to ascertain whether or not an owner of the work can be traced. Such searches are described as 'diligent searches'. Diligent searches include a search of the register held by the Intellectual Property Office as well as the databases maintained by OHIM, the European equivalent of the IPO. Where searches of these databases fail to reveal the owner, then the applicant must search the sources listed in the relevant schedules to the Copyrights Designs and Patents Act 1988 (as amended). These sources are also contained in the relevant schedules of the Regulations. It is anticipated that the new Copyright Hub (www.copyrighthub.co.uk), currently being trialled, will assist potential applicants in conducting the requisite searches. A diligent search will be valid for seven years. How does the licence application process work? The applicant must provide the Intellectual Property Office with details of the following: the diligent search; and the proposed use of the orphan work. Once this is received the IPO will consider the application and if successful, will grant a non-exclusive license to use the orphan work in the UK only. The licensee will have no right to grant sub-licenses. The IPO may refuse to grant a license to use the orphan work if it considers that the proposed use is not appropriate. For example if it constitutes a derogatory treatment of the orphan work. The term of the license may be granted for a maximum period of seven years. A licensee may apply to renew the license for a further term not exceeding seven years. In order to be accepted the request must be accompanied by another diligent search. What will it cost? The IPO may charge a reasonable fee for processing the application of the license, or for varying or renewing an existing license. The license fee itself will be calculated at the market rate which the IPO will calculate by taking into account relevant factors including fees for such similar licenses for similar works. The license fee will be held by the IPO. If the owner of the orphan work is located within eight years from the date of the grant of the license the fees will be paid to them. If no rights owner is found or comes forward during that eight year period then fees may be applied to the cost of running the orphan works scheme and any surplus will be applied to social, cultural and educational activities. Can I challenge the decision of the IPO? A rights holder may appeal the conduct of the IPO on the grounds of acting inappropriately or failure to comply with its obligations under the Regulations. Similarly, an orphan licensee may appeal the licensing or the refusal by the IPO to license the orphan work or, if relevant, the level of fees charged in relation to licensing the works. Why is this important? Whilst the finer details of the licensing scheme need to be finalised, the aim of the orphan works scheme is to liberate a body of work which historically has been unavailable for commercial use without fear of copyright infringement proceedings being brought. This is potentially good news for commercial organisations wishing to use such works. However, concerns still remain for copyright owners as many believe that the wording of the Regulations is ambiguous and may permit the IPO to grant rights in their work at a level of fees which would not be generally agreed by them or indeed, that the IPO will grant licences which they would never have entered into. Furthermore, such rights holders believe that the scheme erodes their rights in their work and therefore damages their business. For more information about orphan works or copyright matters generally, please get in touch. DisclaimerThis document is for informational purposes only and does not constitute legal advice. It is recommended that specific professional advice is sought before acting on any of the information given.Mon, 08 Sep 2014 00:00:00 +0100<![CDATA[Laura Harper ]]><![CDATA[ The regulations relating to the licensing and use of orphan works will come into force in October this year. The regulations implement the European Directive on Orphan Works as adopted through the Enterprise and Regulatory Reform Act 2013 (the Act). You may recall that the Act provoked much debate when it received Royal Assent last year and it was quickly named the 'Instagram Act' as sections relating to copyright were compared to the former Instagram privacy policy which claimed rights in all photographs posted on Instagram. The regulations are particularly relevant given that increasingly, businesses use the internet to source content and the difficulty which this presents in identifying the authors of that content. Remind me, what are Orphan Works? Under the regulations, an orphan work is a work where, after a diligent search, one or more of the rights holders cannot be identified or located. By 'rights holders' we mean the owner of the copyright in the work. Tell me more Two statutory instruments will bring into force the new laws relating to orphan works and their use and licensing in October this year namely, The Copyrights and Rights in Performances (Licensing of Orphan Works) Regulation 2014 and the Copyrights and Rights in Performances (Certain Permitted Uses of Copyright Works) Regulation 2014 (the Regulations). As you will see from their names, the Regulations effectively create two sub-sets of orphan works. Firstly those licensed by the authorising body which will be the Intellectual Property Office (IPO) and secondly those whose use is permitted by certain cultural institutions such as libraries, museums or educational establishments. How do I know that the work is an orphan work? The regulations state that a reasonable search of the relevant sources must be undertaken in order to ascertain whether or not an owner of the work can be traced. Such searches are described as 'diligent searches'. Diligent searches include a search of the register held by the Intellectual Property Office as well as the databases maintained by OHIM, the European equivalent of the IPO. Where searches of these databases fail to reveal the owner, then the applicant must search the sources listed in the relevant schedules to the Copyrights Designs and Patents Act 1988 (as amended). These sources are also contained in the relevant schedules of the Regulations. It is anticipated that the new Copyright Hub (www.copyrighthub.co.uk), currently being trialled, will assist potential applicants in conducting the requisite searches. A diligent search will be valid for seven years. How does the licence application process work? The applicant must provide the Intellectual Property Office with details of the following: the diligent search; and the proposed use of the orphan work. Once this is received the IPO will consider the application and if successful, will grant a non-exclusive license to use the orphan work in the UK only. The licensee will have no right to grant sub-licenses. The IPO may refuse to grant a license to use the orphan work if it considers that the proposed use is not appropriate. For example if it constitutes a derogatory treatment of the orphan work. The term of the license may be granted for a maximum period of seven years. A licensee may apply to renew the license for a further term not exceeding seven years. In order to be accepted the request must be accompanied by another diligent search. What will it cost? The IPO may charge a reasonable fee for processing the application of the license, or for varying or renewing an existing license. The license fee itself will be calculated at the market rate which the IPO will calculate by taking into account relevant factors including fees for such similar licenses for similar works. The license fee will be held by the IPO. If the owner of the orphan work is located within eight years from the date of the grant of the license the fees will be paid to them. If no rights owner is found or comes forward during that eight year period then fees may be applied to the cost of running the orphan works scheme and any surplus will be applied to social, cultural and educational activities. Can I challenge the decision of the IPO? A rights holder may appeal the conduct of the IPO on the grounds of acting inappropriately or failure to comply with its obligations under the Regulations. Similarly, an orphan licensee may appeal the licensing or the refusal by the IPO to license the orphan work or, if relevant, the level of fees charged in relation to licensing the works. Why is this important? Whilst the finer details of the licensing scheme need to be finalised, the aim of the orphan works scheme is to liberate a body of work which historically has been unavailable for commercial use without fear of copyright infringement proceedings being brought. This is potentially good news for commercial organisations wishing to use such works. However, concerns still remain for copyright owners as many believe that the wording of the Regulations is ambiguous and may permit the IPO to grant rights in their work at a level of fees which would not be generally agreed by them or indeed, that the IPO will grant licences which they would never have entered into. Furthermore, such rights holders believe that the scheme erodes their rights in their work and therefore damages their business. For more information about orphan works or copyright matters generally, please get in touch. DisclaimerThis document is for informational purposes only and does not constitute legal advice. It is recommended that specific professional advice is sought before acting on any of the information given.]]>{E778527B-64C4-4D87-A95A-6CD66B994CDA}https://www.shoosmiths.co.uk/news/press-releases/why-ryder-cup-organisers-are-in-difficult-position-8254.aspxWhy Ryder Cup organisers may have put themselves in a difficult position Ryder Cup organisers have vowed to remove cameras and smartphones from any spectator taking audio, video or photo footage of the event, and last week Kate Bush sent a plea to fans to watch her performance with their eyes as opposed to through a lens. Download hi-res image Gary Assim But how should infringment be controlled? Copyright expert, Gary Assim, comments. Following on from Kate Bush requesting fans to enjoy the moment and not take photos or videos of her come back concert, Ryder Cup organisers have just announced that they are banning the use of audio or video capture and photos, unless on the practice range. This includes uploading of such files to twitter, facebook or other social media sites. But why are some taking such drastic measures, while others are relying upon voluntary spectator support? 'Whereas Kate Bush appealed to her fans to voluntarily cease such action, the majority of whom seemed to heed her request, Ryder Cup organisers have taken the opposite view and are apparently forcing people not to take audio, video or photo footage or suffer confiscation of the offending phone or camera.' said Gary Assim, copyright expert and head of intellectual property and creative industries at national law firm Shoosmiths. He continued, 'It is likely that Ryder Cup organisers have unwittingly put themselves in a difficult position. On the one hand they have published the fact that no audio, video or photo footage will be allowed in order to preserve the image of the Ryder Cup. On the other hand, it will be almost impossible to stop such footage being taken and instantly uploaded to social media.' Gary Assim says, if Ryder Cup organisers are to go ahead with this drastic move, they should be ready for a bigger spend - but he warns even that might not put people off publishing material they don't have the rights to. 'Most mobile phones have sufficiently good cameras that do not make a shutter sound and can be used surreptitiously. Unless the Ryder Cup organisers are going to invest in closed circuit cameras and more marshals to enforce this ban, it will merely encourage people to post footage on social media to show that the ban is simply impractical.' 'Perhaps it would have been better to use peer pressure to stop people taking photos or videos, especially if it is distracting to the players. It will be interesting to see how the fans react.' Mon, 01 Sep 2014 00:00:00 +0100<![CDATA[Gary Assim ]]><![CDATA[ Ryder Cup organisers have vowed to remove cameras and smartphones from any spectator taking audio, video or photo footage of the event, and last week Kate Bush sent a plea to fans to watch her performance with their eyes as opposed to through a lens. Download hi-res image Gary Assim But how should infringment be controlled? Copyright expert, Gary Assim, comments. Following on from Kate Bush requesting fans to enjoy the moment and not take photos or videos of her come back concert, Ryder Cup organisers have just announced that they are banning the use of audio or video capture and photos, unless on the practice range. This includes uploading of such files to twitter, facebook or other social media sites. But why are some taking such drastic measures, while others are relying upon voluntary spectator support? 'Whereas Kate Bush appealed to her fans to voluntarily cease such action, the majority of whom seemed to heed her request, Ryder Cup organisers have taken the opposite view and are apparently forcing people not to take audio, video or photo footage or suffer confiscation of the offending phone or camera.' said Gary Assim, copyright expert and head of intellectual property and creative industries at national law firm Shoosmiths. He continued, 'It is likely that Ryder Cup organisers have unwittingly put themselves in a difficult position. On the one hand they have published the fact that no audio, video or photo footage will be allowed in order to preserve the image of the Ryder Cup. On the other hand, it will be almost impossible to stop such footage being taken and instantly uploaded to social media.' Gary Assim says, if Ryder Cup organisers are to go ahead with this drastic move, they should be ready for a bigger spend - but he warns even that might not put people off publishing material they don't have the rights to. 'Most mobile phones have sufficiently good cameras that do not make a shutter sound and can be used surreptitiously. Unless the Ryder Cup organisers are going to invest in closed circuit cameras and more marshals to enforce this ban, it will merely encourage people to post footage on social media to show that the ban is simply impractical.' 'Perhaps it would have been better to use peer pressure to stop people taking photos or videos, especially if it is distracting to the players. It will be interesting to see how the fans react.' ]]>{01E259CA-827C-4DB2-BD98-C86E78A5AFDC}https://www.shoosmiths.co.uk/client-resources/legal-updates/confiscation-vs-peer-pressure-copyright-infringement-8251.aspxCompulsion Vs peer pressure Following on from our comments about Kate Bush requesting fans to enjoy the moment and not take photos or videos of her come back concert, Ryder Cup organisers have just announced that they are banning the use of audio or video capture and photos. Unless on the practice range. This includes uploading of such files to twitter, facebook or other social media sites. Whereas Kate Bush appealed to her fans to voluntarily cease such action, the majority of whom seemed to heed her request, the Ryder Cup organisers have taken the opposite view and are apparently forcing people not to take audio, video or photo footage or suffer confiscation of the offending phone or camera. It is likely that the Ryder Cup organisers have unwittingly put themselves in a difficult position. On the one hand they have published the fact that no audio, video or photo footage will be allowed in order to preserve the image of the Ryder Cup. On the other hand it will be almost impossible to stop such footage being taken and instantly uploaded to social media. Most mobile phones have sufficiently good cameras that do not make a shutter sound and can be used surreptitiously. Unless the Ryder Cup organisers are going to invest in closed circuit cameras and more marshals to enforce this ban, it will merely encourage people to post footage on social media to show that the ban is simply impractical. Perhaps it would have been better to use peer pressure to stop people taking photos or videos, especially if it is distracting to the players. It will be interesting to see how the fans react. Mon, 01 Sep 2014 00:00:00 +0100<![CDATA[Gary Assim ]]><![CDATA[ Following on from our comments about Kate Bush requesting fans to enjoy the moment and not take photos or videos of her come back concert, Ryder Cup organisers have just announced that they are banning the use of audio or video capture and photos. Unless on the practice range. This includes uploading of such files to twitter, facebook or other social media sites. Whereas Kate Bush appealed to her fans to voluntarily cease such action, the majority of whom seemed to heed her request, the Ryder Cup organisers have taken the opposite view and are apparently forcing people not to take audio, video or photo footage or suffer confiscation of the offending phone or camera. It is likely that the Ryder Cup organisers have unwittingly put themselves in a difficult position. On the one hand they have published the fact that no audio, video or photo footage will be allowed in order to preserve the image of the Ryder Cup. On the other hand it will be almost impossible to stop such footage being taken and instantly uploaded to social media. Most mobile phones have sufficiently good cameras that do not make a shutter sound and can be used surreptitiously. Unless the Ryder Cup organisers are going to invest in closed circuit cameras and more marshals to enforce this ban, it will merely encourage people to post footage on social media to show that the ban is simply impractical. Perhaps it would have been better to use peer pressure to stop people taking photos or videos, especially if it is distracting to the players. It will be interesting to see how the fans react. ]]>{F8C1BA0B-2480-4467-9C51-1EA7F107928E}https://www.shoosmiths.co.uk/client-resources/legal-updates/premier-league-kicks-off-new-copyright-clampdown-8208.aspxPremier League kicks off new copyright clampdown As the new season of the Premier League kicked off over the weekend, the Football Association Premier League (FAPL) has issued a warning to people posting unofficial videos of goals online, stating that these videos are in 'breach of copyright'. Thousands of 'Vines' (a service which allows users to record, edit and share seven-second long videos) of goals were posted online during the previous Premier League season and during the recent World Cup, with some being uploaded within seconds of the goal being scored. SKY and BT have between them paid £3 billion over 3 seasons for the exclusive rights to broadcast Premier League matches. With so much money being spent to secure these rights, it is obvious to see why the FAPL is anxious to keep its licensees happy. Another interested party is The Sun which, along with The Times, has bought the online broadcasting rights, and charges £8 a month in subscription fees for its Sun+ service, which hosts goals online within a few minutes of the ball crossing the line. The most popular Vine accounts attract hundreds of thousands of followers and allow videos of goals to be posted online within seconds, to be viewed for free by anyone with access to the internet. It is no wonder therefore that these Vine videos are seen as a real threat to the services provided by official broadcasters. Is the content of a broadcast, i.e. a Premier League match, protected by copyright? In 2012 we reported on what is now known as the 'decoder case'. In this case the Court of Justice of the European Union (CJEU) held that the Premier League cannot claim copyright in Premier League matches itself as they cannot be classified as works; however, certain elements, such as the Premier League anthem and graphics and logos used in the program are subject to copyright. If we follow this line of reasoning, then it would seem that any Vine video of a broadcast which includes elements such as those mentioned by the CJEU would be subject to copyright, and it is likely that most Vine videos of goals posted online will include such protected elements. In a typical official broadcast of a Premier League match for example, the score is usually shown in an identifiable way along with the logo of the broadcaster and/or Premier League in the top left corner of the screen. It is likely that any copying of this broadcast (logos included) would be an infringement of copyright. Following the decoder case the FAPL has already sought to increase the prominence of such copyright protected elements in its broadcasts, making it harder for individuals to post videos without infringing copyright at the same time as reinforcing the position on the use of foreign decoders. Is the footage itself protected by copyright? However, what if a video was posted online with those copyright protected elements cropped out? In order to edit a video, to remove it of the protected elements, it would presumably be necessary for the original video to be copied onto a device on which the editing may be carried out. The act of copying the original video would be an infringement of copyright. In addition, whilst the matches in and of themselves cannot be classified as works (following the CJEU's reasoning), could it be argued that the edited content of a broadcast of a match, as opposed to a simple recording of the match, may be protected as a dramatic work? According to recent UK case law, originality requires a modicum of skill and labour in creating the work and there needs to be some effort on the part of the creator. It's certainly arguable that the exertion of skill and labour in positioning the cameras, cutting to close-ups, choosing the camera angles etc. is enough to qualify for copyright protection as a dramatic work, including the moment a goal is scored. Previous case law found that recordings of sporting events do not enjoy copyright in and of themselves but there has been no consideration of this issue in the years since filming techniques became more elaborate - the CJEU did not consider the issue in any depth. What about the broadcast signal itself? Even if the content of a sporting broadcast is not protected by copyright the transmission of it will be. In the UK, under the Copyright, Designs and Patents Act 1988 (CDPA) broadcasters benefit from copyright in either terrestrial or satellite broadcasts, and in internet transmissions under certain circumstances. Both SKY and BTs' methods of delivering the matches satisfy the CDPA's requirements and as a result the act of copying and uploading Vine videos of the goals constitutes a beach of copyright. For a finding that the copyright has been infringed a 'substantial part' must have been copied, however the test is qualitative and although it may be a matter of seconds, footage of a goal is likely to be considered a substantial part of the broadcast of any football match. This is very much a question of interpretation however, and would need to be evaluated on a case by case basis. Any defences? Could it be argued that, by posting videos of goals online, these individuals are in fact reporting football related news, and therefore have a defence of 'fair dealing' under section 30 of the CDPA for reporting current events? Social media has become one of the most effective forums for reporting news, especially for sport. Indeed, it is often quicker to check a football score by refreshing your Twitter feed than it is by refreshing your news app. There is also no legal requirement for the individuals posting the videos to be "news reporters" in the conventional sense. It would be interesting to see the court's view on this argument. What can the FAPL do? It has been suggested by some commentators that the FAPL's recent warning to fans is nothing more than a scare tactic, and although this may be true, there does appear to be some grounds for believing that it may have some success taking legal action. Whilst the FAPL considers its options, it is likely in the meantime to continue to apply pressure on social media sites to take action in the form of removing individual videos and blocking the accounts of repeat infringers. However, with so many videos being uploaded, it is logistically a huge challenge to keep track of them all, and by the time the videos have been removed, the damage will already have been done. Wed, 20 Aug 2014 00:00:00 +0100<![CDATA[Gary Assim ]]><![CDATA[ As the new season of the Premier League kicked off over the weekend, the Football Association Premier League (FAPL) has issued a warning to people posting unofficial videos of goals online, stating that these videos are in 'breach of copyright'. Thousands of 'Vines' (a service which allows users to record, edit and share seven-second long videos) of goals were posted online during the previous Premier League season and during the recent World Cup, with some being uploaded within seconds of the goal being scored. SKY and BT have between them paid £3 billion over 3 seasons for the exclusive rights to broadcast Premier League matches. With so much money being spent to secure these rights, it is obvious to see why the FAPL is anxious to keep its licensees happy. Another interested party is The Sun which, along with The Times, has bought the online broadcasting rights, and charges £8 a month in subscription fees for its Sun+ service, which hosts goals online within a few minutes of the ball crossing the line. The most popular Vine accounts attract hundreds of thousands of followers and allow videos of goals to be posted online within seconds, to be viewed for free by anyone with access to the internet. It is no wonder therefore that these Vine videos are seen as a real threat to the services provided by official broadcasters. Is the content of a broadcast, i.e. a Premier League match, protected by copyright? In 2012 we reported on what is now known as the 'decoder case'. In this case the Court of Justice of the European Union (CJEU) held that the Premier League cannot claim copyright in Premier League matches itself as they cannot be classified as works; however, certain elements, such as the Premier League anthem and graphics and logos used in the program are subject to copyright. If we follow this line of reasoning, then it would seem that any Vine video of a broadcast which includes elements such as those mentioned by the CJEU would be subject to copyright, and it is likely that most Vine videos of goals posted online will include such protected elements. In a typical official broadcast of a Premier League match for example, the score is usually shown in an identifiable way along with the logo of the broadcaster and/or Premier League in the top left corner of the screen. It is likely that any copying of this broadcast (logos included) would be an infringement of copyright. Following the decoder case the FAPL has already sought to increase the prominence of such copyright protected elements in its broadcasts, making it harder for individuals to post videos without infringing copyright at the same time as reinforcing the position on the use of foreign decoders. Is the footage itself protected by copyright? However, what if a video was posted online with those copyright protected elements cropped out? In order to edit a video, to remove it of the protected elements, it would presumably be necessary for the original video to be copied onto a device on which the editing may be carried out. The act of copying the original video would be an infringement of copyright. In addition, whilst the matches in and of themselves cannot be classified as works (following the CJEU's reasoning), could it be argued that the edited content of a broadcast of a match, as opposed to a simple recording of the match, may be protected as a dramatic work? According to recent UK case law, originality requires a modicum of skill and labour in creating the work and there needs to be some effort on the part of the creator. It's certainly arguable that the exertion of skill and labour in positioning the cameras, cutting to close-ups, choosing the camera angles etc. is enough to qualify for copyright protection as a dramatic work, including the moment a goal is scored. Previous case law found that recordings of sporting events do not enjoy copyright in and of themselves but there has been no consideration of this issue in the years since filming techniques became more elaborate - the CJEU did not consider the issue in any depth. What about the broadcast signal itself? Even if the content of a sporting broadcast is not protected by copyright the transmission of it will be. In the UK, under the Copyright, Designs and Patents Act 1988 (CDPA) broadcasters benefit from copyright in either terrestrial or satellite broadcasts, and in internet transmissions under certain circumstances. Both SKY and BTs' methods of delivering the matches satisfy the CDPA's requirements and as a result the act of copying and uploading Vine videos of the goals constitutes a beach of copyright. For a finding that the copyright has been infringed a 'substantial part' must have been copied, however the test is qualitative and although it may be a matter of seconds, footage of a goal is likely to be considered a substantial part of the broadcast of any football match. This is very much a question of interpretation however, and would need to be evaluated on a case by case basis. Any defences? Could it be argued that, by posting videos of goals online, these individuals are in fact reporting football related news, and therefore have a defence of 'fair dealing' under section 30 of the CDPA for reporting current events? Social media has become one of the most effective forums for reporting news, especially for sport. Indeed, it is often quicker to check a football score by refreshing your Twitter feed than it is by refreshing your news app. There is also no legal requirement for the individuals posting the videos to be "news reporters" in the conventional sense. It would be interesting to see the court's view on this argument. What can the FAPL do? It has been suggested by some commentators that the FAPL's recent warning to fans is nothing more than a scare tactic, and although this may be true, there does appear to be some grounds for believing that it may have some success taking legal action. Whilst the FAPL considers its options, it is likely in the meantime to continue to apply pressure on social media sites to take action in the form of removing individual videos and blocking the accounts of repeat infringers. However, with so many videos being uploaded, it is logistically a huge challenge to keep track of them all, and by the time the videos have been removed, the damage will already have been done. ]]>{C8789309-F469-4AAE-AF3B-D761AD08AAD7}https://www.shoosmiths.co.uk/news/press-releases/rise-of-selfies-poses-legal-questions-8165.aspxRise of &#39;selfies&#39; poses legal questions - especially after monkey-gate, says top lawyer Leading image rights lawyer, Gary Assim, head of the intellectual property and creative industries (IPCI) group at national law firm Shoosmiths, has warned of a raft of disputes following the rise of the 'selfie'. Download hi-res image From teenagers posing for photos with film stars on the red carpet, football fans grabbing a shot with their boyhood heroes, to monkeys taking photos of themselves on your camera - the rise of the 'selfie' poses one burning legal question, says the expert: who owns the copyright? The photographic phenomenon recently hit the headlines when a monkey selfie went viral, with the image subsequently used by Wikipedia. This incident poses a raft of legal questions surrounding copyright - who owns the image - the monkey or the photographer? Should the image be considered in the public domain? The photographer in question is David Slater from Gloucestershire. He argued with the internet giant that he owns the copyright to the now famous image taken using his camera. However, a Wikipedia spokesperson said: 'It's clear the monkey was the photographer. Since the monkey took the picture, it means that there was no one on whom to bestow the copyright, so the image falls into the public domain.' But is this really the case? Gary Assim commented: 'Whilst this would seem like the obvious answer, sometimes the creator of a photo will be the person that sets up or 'frames' the shot, not the person that presses the button. 'If the monkey did create the photo, they are not legal persons so no one would own the copyright and the image would be free for all to use, as Wikipedia suggest. But, according to current UK case law, originality requires a modicum of skill and labour in creating the work and so there needs to be some effort on the part of the creator. In this example, whilst the exact facts remain unclear, Mr Slater has arguably expended a degree of skill and effort in setting up this image and if this is true, he could have a case.' The law, in the form of the Copyright, Designs and Patents Act 1988, states the owner of the image is the person who created it. However, the problem with the monkey 'selfie' situation is that it is not entirely clear who created the image. Gary added there are two issues from this to consider: 'The first concerns the copyright in images not taken by humans. This issue does not only concern impertinent primates but also other images captured without human intervention, such as software written by computers or use by robots - currently a source of debate in the copyright world. 'The second concern is with the emergence of the 'selfie' as a worldwide trend. It was inevitable that legal issues would begin to crop up. Indeed, the questions raised by the monkey 'selfie' are not too dissimilar to those raised following the now famous 'Oscar selfie' - the photo which became the most-shared image on Twitter, taken by Bradley Cooper and co-ordinated by Ellen DeGeneres, both of whom could potentially lay claim to the copyright in the resulting image.' Shoosmiths' UK-wide IPCI team is one of the most comprehensive in the country with more than a dozen dedicated specialists covering digital, music, publishing, fashion, gaming, cyber security, branding and design. The team also sits in a wider 10-office national network with the breadth to offer creative industry clients the very best advice across the business spectrum. Wed, 13 Aug 2014 00:00:00 +0100<![CDATA[Gary Assim ]]><![CDATA[ Leading image rights lawyer, Gary Assim, head of the intellectual property and creative industries (IPCI) group at national law firm Shoosmiths, has warned of a raft of disputes following the rise of the 'selfie'. Download hi-res image From teenagers posing for photos with film stars on the red carpet, football fans grabbing a shot with their boyhood heroes, to monkeys taking photos of themselves on your camera - the rise of the 'selfie' poses one burning legal question, says the expert: who owns the copyright? The photographic phenomenon recently hit the headlines when a monkey selfie went viral, with the image subsequently used by Wikipedia. This incident poses a raft of legal questions surrounding copyright - who owns the image - the monkey or the photographer? Should the image be considered in the public domain? The photographer in question is David Slater from Gloucestershire. He argued with the internet giant that he owns the copyright to the now famous image taken using his camera. However, a Wikipedia spokesperson said: 'It's clear the monkey was the photographer. Since the monkey took the picture, it means that there was no one on whom to bestow the copyright, so the image falls into the public domain.' But is this really the case? Gary Assim commented: 'Whilst this would seem like the obvious answer, sometimes the creator of a photo will be the person that sets up or 'frames' the shot, not the person that presses the button. 'If the monkey did create the photo, they are not legal persons so no one would own the copyright and the image would be free for all to use, as Wikipedia suggest. But, according to current UK case law, originality requires a modicum of skill and labour in creating the work and so there needs to be some effort on the part of the creator. In this example, whilst the exact facts remain unclear, Mr Slater has arguably expended a degree of skill and effort in setting up this image and if this is true, he could have a case.' The law, in the form of the Copyright, Designs and Patents Act 1988, states the owner of the image is the person who created it. However, the problem with the monkey 'selfie' situation is that it is not entirely clear who created the image. Gary added there are two issues from this to consider: 'The first concerns the copyright in images not taken by humans. This issue does not only concern impertinent primates but also other images captured without human intervention, such as software written by computers or use by robots - currently a source of debate in the copyright world. 'The second concern is with the emergence of the 'selfie' as a worldwide trend. It was inevitable that legal issues would begin to crop up. Indeed, the questions raised by the monkey 'selfie' are not too dissimilar to those raised following the now famous 'Oscar selfie' - the photo which became the most-shared image on Twitter, taken by Bradley Cooper and co-ordinated by Ellen DeGeneres, both of whom could potentially lay claim to the copyright in the resulting image.' Shoosmiths' UK-wide IPCI team is one of the most comprehensive in the country with more than a dozen dedicated specialists covering digital, music, publishing, fashion, gaming, cyber security, branding and design. The team also sits in a wider 10-office national network with the breadth to offer creative industry clients the very best advice across the business spectrum. ]]>{632FA943-34B2-4C5A-8C58-0F701138598E}https://www.shoosmiths.co.uk/client-resources/legal-updates/copyright-conundrums-monkeying-about-with-camera-8162.aspxCopyright conundrums - monkeying about with a camera David Slater, a nature photographer from Gloucestershire, argues that he owns the copyright in a now famous image taken using his camera - however, Wikipedia claim that there is no copyright in the image because it was actually taken by a monkey. Background In 2011 Mr Slater followed a group of crested black macaques in Indonesia for three days, taking pictures as he went. It is unclear how it came about but one of the monkeys took a 'selfie' picture using Mr Slater's camera and this picture ended up online and subsequently on Wikipedia. Mr Slater claims that he owns the copyright in the image because the picture was taken on his camera. Wikipedia argue that because Mr Slater did not press the button he cannot own the rights in the image and therefore because monkeys are not legal persons the picture is in the public domain. A spokesperson for Wikipedia said: 'It's clear the monkey was the photographer. Because the monkey took the picture, it means that there was no one on whom to bestow the copyright, so the image falls into the public domain.' The law, in the form of the Copyright, Designs and Patents Act 1988 (CDPA), states the owner of the image is the person who created it. That is not to say that the person who presses the trigger is automatically the creator especially if that person did not make the original contribution or provide a sufficient amount of skill, labour or judgment. However the problem with the monkey 'selfie' situation is that it is not entirely clear who did create the image, technically speaking. So, we have two possible scenarios: 1. The monkey created the photo - there is no copyright Common sense would dictate that the creator of the photo is the person standing behind the camera pressing the button if we follow that logic in this case then the monkey created the photo. Whilst this would seem like the obvious answer, it is not a hard and fast rule and of course must depend on the facts of the case in question. Sometimes the creator of a photo will be the person that sets up or 'frames' the shot, not the person that presses the button. Unfortunately for the monkey, if it did create the photo, monkeys are not legal persons so no one would own the copyright and the image would be free for all to use, as Wikipedia suggest. 2. Mr Slater created the photo - he owns the copyright It was Mr Slater's camera but did he set up the picture and therefore create the image? Under the CDPA in order for copyright to subsist in the image it must be original and according to current UK case law, originality requires a modicum of skill and labour in creating the work and so there needs to be some effort on the part of the creator. In the present case, whilst the exact facts remain unclear, Mr Slater has arguably expended a degree of skill and effort in setting up this image. He vested time, effort and money to travel to Indonesia, be in the right place at the right time and create the conditions and opportunity that led to the monkey taking the shot; without this effort the photograph would never have been taken. Indeed, despite some media reports claiming that a monkey snatched the camera out of his hand, Mr Slater suggests that the shot was actually planned. He says he spent 3 days in Indonesia following the monkeys and is quoted on the BBC website saying: 'I became accepted as part of the troop, they touched me and groomed me.so I thought they could take their own photograph', he added, 'I set the camera up on a tripod, framed [the shot] up and got the exposure right.and all you've got to do is give the monkey the button to press and lo and behold you got the picture'. If this version of events is accurate then arguably Mr Slater did create the photo because it is the result of much preparation leading up to the taking of the picture. In this respect the pressing of the button is more of a formality and is part of a process that led to the final image. On the other hand, if (as some media sources have suggested) the picture was the result of an accident then it will be harder for Mr Slater to claim rights in the image. Implications There are two issues emerging from this story that we think should be highlighted. The first concerns the copyright in images not taken by humans (in our case the monkey). This issue does not only concern impertinent primates but also other images captured without human intervention, such as software written by computers or use by robots. This is currently a source of debate in the copyright world. The second concerns the current 'selfie' trend. With the emergence of the 'selfie' as a worldwide trend, it was inevitable that legal issues would begin to crop up. Indeed, the questions raised by the monkey 'selfie' are not too dissimilar to those raised following the now famous 'Oscar selfie'. That photo which became the most-shared image on Twitter, was taken by Bradley Cooper and coordinated by Ellen DeGeneres, both of whom could potentially lay claim to the copyright in the resulting image. In addition to this, Samsung made the camera and apparently organised the stunt for publicity and so they could also assert a claim in the copyright. So who owns the rights in a 'selfie'? The person who frames the shot and presses the button or the person who owns the camera/phone/device? If, for example, you were in the street and walked past Usain Bolt and you asked him for a selfie with you, who would own the copyright in the resulting image if he took your phone out of your hand and took the selfie of both of you himself, giving the phone back and then walking off? Copyright can vest in joint authors in certain circumstances, and where more than one person has made a significant contribution to the creation of a 'selfie' it may be that copyright in the image vests with multiple contributors Conclusion Copyright is an area of law that is in flux at the moment and what would be helpful is some case law guidance to clarify the issues raised above. To date there is no suggestion that Mr Slater will take legal action against Wikipedia but if he doesn't there is little doubt that another case will come along in the near future. Tue, 12 Aug 2014 00:00:00 +0100<![CDATA[Gary Assim ]]><![CDATA[ David Slater, a nature photographer from Gloucestershire, argues that he owns the copyright in a now famous image taken using his camera - however, Wikipedia claim that there is no copyright in the image because it was actually taken by a monkey. Background In 2011 Mr Slater followed a group of crested black macaques in Indonesia for three days, taking pictures as he went. It is unclear how it came about but one of the monkeys took a 'selfie' picture using Mr Slater's camera and this picture ended up online and subsequently on Wikipedia. Mr Slater claims that he owns the copyright in the image because the picture was taken on his camera. Wikipedia argue that because Mr Slater did not press the button he cannot own the rights in the image and therefore because monkeys are not legal persons the picture is in the public domain. A spokesperson for Wikipedia said: 'It's clear the monkey was the photographer. Because the monkey took the picture, it means that there was no one on whom to bestow the copyright, so the image falls into the public domain.' The law, in the form of the Copyright, Designs and Patents Act 1988 (CDPA), states the owner of the image is the person who created it. That is not to say that the person who presses the trigger is automatically the creator especially if that person did not make the original contribution or provide a sufficient amount of skill, labour or judgment. However the problem with the monkey 'selfie' situation is that it is not entirely clear who did create the image, technically speaking. So, we have two possible scenarios: 1. The monkey created the photo - there is no copyright Common sense would dictate that the creator of the photo is the person standing behind the camera pressing the button if we follow that logic in this case then the monkey created the photo. Whilst this would seem like the obvious answer, it is not a hard and fast rule and of course must depend on the facts of the case in question. Sometimes the creator of a photo will be the person that sets up or 'frames' the shot, not the person that presses the button. Unfortunately for the monkey, if it did create the photo, monkeys are not legal persons so no one would own the copyright and the image would be free for all to use, as Wikipedia suggest. 2. Mr Slater created the photo - he owns the copyright It was Mr Slater's camera but did he set up the picture and therefore create the image? Under the CDPA in order for copyright to subsist in the image it must be original and according to current UK case law, originality requires a modicum of skill and labour in creating the work and so there needs to be some effort on the part of the creator. In the present case, whilst the exact facts remain unclear, Mr Slater has arguably expended a degree of skill and effort in setting up this image. He vested time, effort and money to travel to Indonesia, be in the right place at the right time and create the conditions and opportunity that led to the monkey taking the shot; without this effort the photograph would never have been taken. Indeed, despite some media reports claiming that a monkey snatched the camera out of his hand, Mr Slater suggests that the shot was actually planned. He says he spent 3 days in Indonesia following the monkeys and is quoted on the BBC website saying: 'I became accepted as part of the troop, they touched me and groomed me.so I thought they could take their own photograph', he added, 'I set the camera up on a tripod, framed [the shot] up and got the exposure right.and all you've got to do is give the monkey the button to press and lo and behold you got the picture'. If this version of events is accurate then arguably Mr Slater did create the photo because it is the result of much preparation leading up to the taking of the picture. In this respect the pressing of the button is more of a formality and is part of a process that led to the final image. On the other hand, if (as some media sources have suggested) the picture was the result of an accident then it will be harder for Mr Slater to claim rights in the image. Implications There are two issues emerging from this story that we think should be highlighted. The first concerns the copyright in images not taken by humans (in our case the monkey). This issue does not only concern impertinent primates but also other images captured without human intervention, such as software written by computers or use by robots. This is currently a source of debate in the copyright world. The second concerns the current 'selfie' trend. With the emergence of the 'selfie' as a worldwide trend, it was inevitable that legal issues would begin to crop up. Indeed, the questions raised by the monkey 'selfie' are not too dissimilar to those raised following the now famous 'Oscar selfie'. That photo which became the most-shared image on Twitter, was taken by Bradley Cooper and coordinated by Ellen DeGeneres, both of whom could potentially lay claim to the copyright in the resulting image. In addition to this, Samsung made the camera and apparently organised the stunt for publicity and so they could also assert a claim in the copyright. So who owns the rights in a 'selfie'? The person who frames the shot and presses the button or the person who owns the camera/phone/device? If, for example, you were in the street and walked past Usain Bolt and you asked him for a selfie with you, who would own the copyright in the resulting image if he took your phone out of your hand and took the selfie of both of you himself, giving the phone back and then walking off? Copyright can vest in joint authors in certain circumstances, and where more than one person has made a significant contribution to the creation of a 'selfie' it may be that copyright in the image vests with multiple contributors Conclusion Copyright is an area of law that is in flux at the moment and what would be helpful is some case law guidance to clarify the issues raised above. To date there is no suggestion that Mr Slater will take legal action against Wikipedia but if he doesn't there is little doubt that another case will come along in the near future. ]]>{F8C94E74-5F66-4175-AE9C-309CAFA6397A}https://www.shoosmiths.co.uk/news/press-releases/shoosmiths-lawyers-contribute-to-landmark-ip-book-8089.aspxShoosmiths lawyers contribute to landmark IP book Intellectual Property (IP) experts at national law firm Shoosmiths have contributed to a number of cases in a new book about landmark European decisions. Download hi-res image 'Landmark IP decisions of the European Court of Justice 2008-2013' book The new book, 'Landmark IP decisions of the European Court of Justice 2008-2013' sets out the most celebrated IP cases of the past five years across the European Union. Shoosmiths IP and creative industries lawyers Jo Joyce and Anastasia Fowle have both authored chapters of the book. Jo Joyce's chapter looks at the IP consequences of a group of pubs showing Premier League matches for customers using foreign decoder cards and set top boxes. The court ruled that the pubs were not infringing the copyright of the events themselves even though they were not to show the broadcasts to their customers. Jo is an information rights specialist and is visiting lecturer in Media Law at City Law School, London. Anastasia Fowle's chapter looks at a judgment relating to a long running dispute between L'Oreal and eBay over sale of L'Oreal products without their consent. The decision of the court upheld a previous decision against eBay on behalf of L'Oreal for copyright and IP infringement of its products. Anastasia is a partner in the Shoosmiths IP and creative industries team and also a visiting lecturer at Anglia Ruskin University in Cambridge. Shoosmiths' UK-wide IP and creative industries team is one of the most comprehensive in the country with more than a dozen dedicated specialists covering digital, music, publishing, fashion, gaming, cyber security, branding and design. The team also sits in a wider 10-office national network with the breadth to offer creative industry clients the very best advice across the business spectrum. Gary Assim, head of Shoosmiths' national IP and creative industries team, said: 'Both of the cases highlighted by our team in this new book are of landmark significance affecting the way millions of consumers access goods and services in the UK, with wider implications across the EU. The expertise that we have built in the team means we can act for companies large or small, in the UK and overseas, giving them a service which spans the full spectrum of IP law. 'Our commitment to excellent service delivery really separates us from the competition. The majority of our lawyers have worked in-house, meaning they are acutely aware of the demand to deliver meaningful business solutions in context, rather than just pure legal advice. 'Our ambition is to create the UK's leading intellectual property and creative industries legal team and the publication of this book, highlighting the leading cases in Europe over the past five years, helps to establish us as the go-to team for cutting-edge legal advice in this sector.'Mon, 28 Jul 2014 00:00:00 +0100<![CDATA[Anastasia Fowle Gary Assim ]]><![CDATA[ Intellectual Property (IP) experts at national law firm Shoosmiths have contributed to a number of cases in a new book about landmark European decisions. Download hi-res image 'Landmark IP decisions of the European Court of Justice 2008-2013' book The new book, 'Landmark IP decisions of the European Court of Justice 2008-2013' sets out the most celebrated IP cases of the past five years across the European Union. Shoosmiths IP and creative industries lawyers Jo Joyce and Anastasia Fowle have both authored chapters of the book. Jo Joyce's chapter looks at the IP consequences of a group of pubs showing Premier League matches for customers using foreign decoder cards and set top boxes. The court ruled that the pubs were not infringing the copyright of the events themselves even though they were not to show the broadcasts to their customers. Jo is an information rights specialist and is visiting lecturer in Media Law at City Law School, London. Anastasia Fowle's chapter looks at a judgment relating to a long running dispute between L'Oreal and eBay over sale of L'Oreal products without their consent. The decision of the court upheld a previous decision against eBay on behalf of L'Oreal for copyright and IP infringement of its products. Anastasia is a partner in the Shoosmiths IP and creative industries team and also a visiting lecturer at Anglia Ruskin University in Cambridge. Shoosmiths' UK-wide IP and creative industries team is one of the most comprehensive in the country with more than a dozen dedicated specialists covering digital, music, publishing, fashion, gaming, cyber security, branding and design. The team also sits in a wider 10-office national network with the breadth to offer creative industry clients the very best advice across the business spectrum. Gary Assim, head of Shoosmiths' national IP and creative industries team, said: 'Both of the cases highlighted by our team in this new book are of landmark significance affecting the way millions of consumers access goods and services in the UK, with wider implications across the EU. The expertise that we have built in the team means we can act for companies large or small, in the UK and overseas, giving them a service which spans the full spectrum of IP law. 'Our commitment to excellent service delivery really separates us from the competition. The majority of our lawyers have worked in-house, meaning they are acutely aware of the demand to deliver meaningful business solutions in context, rather than just pure legal advice. 'Our ambition is to create the UK's leading intellectual property and creative industries legal team and the publication of this book, highlighting the leading cases in Europe over the past five years, helps to establish us as the go-to team for cutting-edge legal advice in this sector.']]>{E7D57755-1359-45A7-BE60-2B903AF67310}https://www.shoosmiths.co.uk/client-resources/legal-updates/combination-features-dead-unregistered-design-rights-8007.aspxIs &#39;combination of features&#39; dead for unregistered community design rights? A seven-year battle between UK fashion company Karen Millen and Irish retail chain Dunnes Stores (Dunnes) looks set to be nearing an end after the European Court of Justice (ECJ) ruled in favour of Karen Millen. The judgment appears at first glance to be good news for designers who are seeking to limit the success of copycats. However, it will be interesting to see how the Irish Court interpret whether a design has individual character or not. The story so far In 2006 Karen Millen designed and sold a striped shirt and a black knit top in Ireland. Dunnes subsequently reproduced these items and placed them on sale in Ireland for a significantly lower price. Karen Millen sued Dunnes, arguing that Dunnes had copied their designs and that the designs were protected by an unregistered Community Design Right (UCDR). Dunnes accepted that it had copied the designs, however, it argued that the designs were not protected by a UCDR because they 'lacked original character'. The Irish High Court initially decided in favour of Karen Millen. Dunnes appealed to the Irish Supreme Court, who referred the case to the ECJ, asking the ECJ to clarify what constitutes 'individual character'. What did the ECJ say? Dunnes argued that Karen Millen could not rely on an UCDR because the designs did not have individual character and failed to 'produce on the informed user a different overall impression' from similar items. They stated that Karen Millen's design was based on a combination of features from earlier designs and that this combination of features gave the same overall impression as Karen Millen's designs. Furthermore, they argued that it was for Karen Millen (and not them) to prove that the design had individual character. In its judgment, the ECJ held the following: 1. An unregistered design should be presumed to be valid if the right holder indicates what elements of their design constitute individual character. This means that the right holder does not need to prove that a design has individual character, rather it is for the defendant to contest the validity of the design. 2. The assessment of whether a design has individual character cannot be made by reference to a combination of earlier designs but rather by reference to one or more specific individual designs. So what does this mean? The case will now go back to the Irish Supreme Court for the final ruling, which will be based on the ECJ's decision and so this has effectively settled the matter. Whilst the first limb of the ECJ's decision is welcome news and a boost for the fashion industry, as the obligation to prove that a design is invalid now clearly rests with the alleged infringer, the question of what amounts to individual character (and thus validity) is not so clear. Prior to this case, most claims for UCDR were based on the designer having combined pre-existing features into a product. It was the combination that gave the product individual character and thus validity as a UCDR since, it would be argued, the combination had never been seen before albeit each feature had. The second limb of the ECJ's decision makes unclear the question of whether a combination of pre-existing features can still be used to prove individual character or is it that you can now only rely on 'specific individual designs'. Hopefully the Irish court will clarify the meaning of 'specific individual designs' but no doubt others will interpret the ECJ decision for their own benefit probably leading to another reference to the ECJ to clarify this decision. So designers are in a stronger position in making claims for UCDR against copycats since the copycats are now under an obligation to prove that the design does not have individual character and is thus invalid. However, the copycat could argue that each of the features of the design is common and that the design does not have a 'specific individual design' that amounts to individual character. That puts the designer in a difficult position at the moment since he/she would have to go to court to find out if their design did have individual character and thus be able to stop the copycat product from being sold. For the moment, if you are a designer it is probably worthwhile trying to stop a copycat product based on this ECJ decision and taking a commercial view on whether to pursue the claim through the courts based on the arguments coming back from the copycat. The ECJ decision may be a deterrent to some infringers but not all. We shall therefore see how the case law in Europe pans out and how they interpret this ECJ decision, watch this space. Wed, 16 Jul 2014 00:00:00 +0100<![CDATA[Gary Assim ]]><![CDATA[ A seven-year battle between UK fashion company Karen Millen and Irish retail chain Dunnes Stores (Dunnes) looks set to be nearing an end after the European Court of Justice (ECJ) ruled in favour of Karen Millen. The judgment appears at first glance to be good news for designers who are seeking to limit the success of copycats. However, it will be interesting to see how the Irish Court interpret whether a design has individual character or not. The story so far In 2006 Karen Millen designed and sold a striped shirt and a black knit top in Ireland. Dunnes subsequently reproduced these items and placed them on sale in Ireland for a significantly lower price. Karen Millen sued Dunnes, arguing that Dunnes had copied their designs and that the designs were protected by an unregistered Community Design Right (UCDR). Dunnes accepted that it had copied the designs, however, it argued that the designs were not protected by a UCDR because they 'lacked original character'. The Irish High Court initially decided in favour of Karen Millen. Dunnes appealed to the Irish Supreme Court, who referred the case to the ECJ, asking the ECJ to clarify what constitutes 'individual character'. What did the ECJ say? Dunnes argued that Karen Millen could not rely on an UCDR because the designs did not have individual character and failed to 'produce on the informed user a different overall impression' from similar items. They stated that Karen Millen's design was based on a combination of features from earlier designs and that this combination of features gave the same overall impression as Karen Millen's designs. Furthermore, they argued that it was for Karen Millen (and not them) to prove that the design had individual character. In its judgment, the ECJ held the following: 1. An unregistered design should be presumed to be valid if the right holder indicates what elements of their design constitute individual character. This means that the right holder does not need to prove that a design has individual character, rather it is for the defendant to contest the validity of the design. 2. The assessment of whether a design has individual character cannot be made by reference to a combination of earlier designs but rather by reference to one or more specific individual designs. So what does this mean? The case will now go back to the Irish Supreme Court for the final ruling, which will be based on the ECJ's decision and so this has effectively settled the matter. Whilst the first limb of the ECJ's decision is welcome news and a boost for the fashion industry, as the obligation to prove that a design is invalid now clearly rests with the alleged infringer, the question of what amounts to individual character (and thus validity) is not so clear. Prior to this case, most claims for UCDR were based on the designer having combined pre-existing features into a product. It was the combination that gave the product individual character and thus validity as a UCDR since, it would be argued, the combination had never been seen before albeit each feature had. The second limb of the ECJ's decision makes unclear the question of whether a combination of pre-existing features can still be used to prove individual character or is it that you can now only rely on 'specific individual designs'. Hopefully the Irish court will clarify the meaning of 'specific individual designs' but no doubt others will interpret the ECJ decision for their own benefit probably leading to another reference to the ECJ to clarify this decision. So designers are in a stronger position in making claims for UCDR against copycats since the copycats are now under an obligation to prove that the design does not have individual character and is thus invalid. However, the copycat could argue that each of the features of the design is common and that the design does not have a 'specific individual design' that amounts to individual character. That puts the designer in a difficult position at the moment since he/she would have to go to court to find out if their design did have individual character and thus be able to stop the copycat product from being sold. For the moment, if you are a designer it is probably worthwhile trying to stop a copycat product based on this ECJ decision and taking a commercial view on whether to pursue the claim through the courts based on the arguments coming back from the copycat. The ECJ decision may be a deterrent to some infringers but not all. We shall therefore see how the case law in Europe pans out and how they interpret this ECJ decision, watch this space. ]]>{A398B3BC-BC68-4819-82FF-DA8E7521ABBD}https://www.shoosmiths.co.uk/client-resources/legal-updates/guidance-inventors-innovation-business-patent-owners-8000.aspxThe new Intellectual Property Act 2014 Guidance for inventors, innovation businesses and patent owners What's it all about? The Intellectual Property Act 2014 (the act) received royal assent on 14 May 2014. The act will come into force between October 2014 and the end of 2015. Stemming from the Hargreaves Review on intellectual property reform, the act seeks to modernise certain aspects of intellectual property law. The main intellectual property rights affected by the act are design rights and patents. This note focuses on the changes made to patent law. Remind me, what do patent's protect? Patents protect inventions - broadly, novel products or processes. Once you have a registered patent it gives you the exclusive right to exploit that patent for a period of 20 years provided that renewal fees are paid to the Intellectual Property Office (IPO) every five years. Consequently, if your business develops patentable technologies or engages third parties to do so then you will need to be aware of these changes. What are the purposes of the changes made to patent rights? The changes have been made broadly to: make it easier for patent owners to provide public notice of their rights provide for the agreement establishing a Unified Patent Court to be brought into effect in the UK allow the Intellectual Property Office (IPO) to share information on unpublished patent applications with international partners to speed up patent processing and expand the circumstances in which the IPO may issue an opinion in respect of patents What are the main changes to patents? Easier notification: Instead of including a patent number on a product, a patent owner can now put others on notice of his rights by including a link to a website which provides details of the patent Increased powers of IPO: as broader power to give opinions and the Comptroller General of Patents, Designs and Trademarks has greater power to revoke a patent on his own initiative Single European patent: The act enables the inter-governmental agreement to provide for a Unified Patent Court within participating European countries, to be brought into effect in the UK. This will mean that it will be possible to apply to the European Patent Office for a single patent which has effect across all participating countries and for some issues to be litigated in a new Unified Patent Court. This could save businesses a considerable amount of money Permits information sharing: The act allows the IPO to share information on unpublished patent applications with international partners, in certain circumstances, to speed up patent processing Minor amendments: There are a number of other minor amendments made to the Patents Act 1977 including extending the period during which a third party can challenge ownership of a granted patent What are the other changes? In addition to the changes to the Design Right and unregistered design regimes which are the subject of our previous guidance note the other main changes are: New FOI exemption: The act has added a new exemption to the Freedom of Information Act 2000 (FOI) for information obtained in the course of or derived from a continuing programme of research, a report of which is intended for future publication, where disclosure would prejudice the report New reporting procedure: Following a recommendation in the Hargreaves Report, there is an obligation on the Secretary of State to report on the IPO's activities each year to show how innovation and growth have been supported in the UK Recognition of foreign works: The act provides for automatic extension of certain copyright provisions of the Copyright, Designs and Patents Act 1988 to nationals of, and works first published in other countries i.e. it recognises certain foreign works How will these changes affect me? It is hoped that the act will benefit many UK businesses and make obtaining international patent registrations and/or bringing patent infringement claims easier. If you would like to find out more about the changes, please do get in touch.Tue, 15 Jul 2014 00:00:00 +0100<![CDATA[Laura Harper ]]><![CDATA[ Guidance for inventors, innovation businesses and patent owners What's it all about? The Intellectual Property Act 2014 (the act) received royal assent on 14 May 2014. The act will come into force between October 2014 and the end of 2015. Stemming from the Hargreaves Review on intellectual property reform, the act seeks to modernise certain aspects of intellectual property law. The main intellectual property rights affected by the act are design rights and patents. This note focuses on the changes made to patent law. Remind me, what do patent's protect? Patents protect inventions - broadly, novel products or processes. Once you have a registered patent it gives you the exclusive right to exploit that patent for a period of 20 years provided that renewal fees are paid to the Intellectual Property Office (IPO) every five years. Consequently, if your business develops patentable technologies or engages third parties to do so then you will need to be aware of these changes. What are the purposes of the changes made to patent rights? The changes have been made broadly to: make it easier for patent owners to provide public notice of their rights provide for the agreement establishing a Unified Patent Court to be brought into effect in the UK allow the Intellectual Property Office (IPO) to share information on unpublished patent applications with international partners to speed up patent processing and expand the circumstances in which the IPO may issue an opinion in respect of patents What are the main changes to patents? Easier notification: Instead of including a patent number on a product, a patent owner can now put others on notice of his rights by including a link to a website which provides details of the patent Increased powers of IPO: as broader power to give opinions and the Comptroller General of Patents, Designs and Trademarks has greater power to revoke a patent on his own initiative Single European patent: The act enables the inter-governmental agreement to provide for a Unified Patent Court within participating European countries, to be brought into effect in the UK. This will mean that it will be possible to apply to the European Patent Office for a single patent which has effect across all participating countries and for some issues to be litigated in a new Unified Patent Court. This could save businesses a considerable amount of money Permits information sharing: The act allows the IPO to share information on unpublished patent applications with international partners, in certain circumstances, to speed up patent processing Minor amendments: There are a number of other minor amendments made to the Patents Act 1977 including extending the period during which a third party can challenge ownership of a granted patent What are the other changes? In addition to the changes to the Design Right and unregistered design regimes which are the subject of our previous guidance note the other main changes are: New FOI exemption: The act has added a new exemption to the Freedom of Information Act 2000 (FOI) for information obtained in the course of or derived from a continuing programme of research, a report of which is intended for future publication, where disclosure would prejudice the report New reporting procedure: Following a recommendation in the Hargreaves Report, there is an obligation on the Secretary of State to report on the IPO's activities each year to show how innovation and growth have been supported in the UK Recognition of foreign works: The act provides for automatic extension of certain copyright provisions of the Copyright, Designs and Patents Act 1988 to nationals of, and works first published in other countries i.e. it recognises certain foreign works How will these changes affect me? It is hoped that the act will benefit many UK businesses and make obtaining international patent registrations and/or bringing patent infringement claims easier. If you would like to find out more about the changes, please do get in touch.]]>{33CBD526-E861-4F41-A1F7-9A57177C3BB6}https://www.shoosmiths.co.uk/news/press-releases/shoosmiths-strengthens-national-ip-offering-7993.aspxShoosmiths strengthens national IP offering National UK law firm Shoosmiths has further strengthened its intellectual property (IP) offering with the hire of Olly Leyden. Download hi-res image Olly Leyden Olly, previously in-house at NBC-Universal, underlines the firm's strength in broadcast media and the wider creative industries. Olly's move comes on top of the additional recent hires of Laura Harper and Carol Isherwood into the Shoosmiths IP team. Olly brings particular expertise in advising clients in film and television across development, production, financing, sales and distribution. He has worked on licensing deals for well-know titles like Good Vibrations, Peppa Pig, The Snowman and The Snowdog and Class of 92 across the world. Shoosmiths' UK-wide IP team is one of the most comprehensive in the country with more than a dozen dedicated specialists covering digital, music, publishing, fashion, gaming, cyber security, branding and design. The team also sits in a wider 10-office national network with the breadth to offer creative industry clients the very best advice across the business spectrum. The team is regularly ranked as a tier one practice in the Chambers and Legal 500 legal directories. Gary Assim, head of Shoosmiths' national IP team, said: 'Our commitment to service delivery really separates us from the competition. Just like Olly, the majority of our lawyers have worked in-house, meaning they are acutely aware of the demand to deliver meaningful business solutions in context, rather than just pure legal advice. 'Our ambition is to create the UK's leading intellectual property (IP) legal team and Olly's appointment, in conjunction with the recent arrivals of Laura Harper and Carol Isherwood, brings that a step closer. 'Olly brings with him excellent depth of expertise of the licensing and broadcast sectors and high-level expertise of content acquisition and I know he will make a great addition to the team in Reading.' Olly Leyden said: 'Intellectual Property is an exciting sector in which to work, with booming tech and creative sectors, often export-led. Coming into a growing, national team within a firm with the reputation of Shoosmiths is a great opportunity to contribute to that growth and contribute to the team's continuing success.' Mon, 14 Jul 2014 00:00:00 +0100<![CDATA[Gary Assim ]]><![CDATA[ National UK law firm Shoosmiths has further strengthened its intellectual property (IP) offering with the hire of Olly Leyden. Download hi-res image Olly Leyden Olly, previously in-house at NBC-Universal, underlines the firm's strength in broadcast media and the wider creative industries. Olly's move comes on top of the additional recent hires of Laura Harper and Carol Isherwood into the Shoosmiths IP team. Olly brings particular expertise in advising clients in film and television across development, production, financing, sales and distribution. He has worked on licensing deals for well-know titles like Good Vibrations, Peppa Pig, The Snowman and The Snowdog and Class of 92 across the world. Shoosmiths' UK-wide IP team is one of the most comprehensive in the country with more than a dozen dedicated specialists covering digital, music, publishing, fashion, gaming, cyber security, branding and design. The team also sits in a wider 10-office national network with the breadth to offer creative industry clients the very best advice across the business spectrum. The team is regularly ranked as a tier one practice in the Chambers and Legal 500 legal directories. Gary Assim, head of Shoosmiths' national IP team, said: 'Our commitment to service delivery really separates us from the competition. Just like Olly, the majority of our lawyers have worked in-house, meaning they are acutely aware of the demand to deliver meaningful business solutions in context, rather than just pure legal advice. 'Our ambition is to create the UK's leading intellectual property (IP) legal team and Olly's appointment, in conjunction with the recent arrivals of Laura Harper and Carol Isherwood, brings that a step closer. 'Olly brings with him excellent depth of expertise of the licensing and broadcast sectors and high-level expertise of content acquisition and I know he will make a great addition to the team in Reading.' Olly Leyden said: 'Intellectual Property is an exciting sector in which to work, with booming tech and creative sectors, often export-led. Coming into a growing, national team within a firm with the reputation of Shoosmiths is a great opportunity to contribute to that growth and contribute to the team's continuing success.' ]]>{B16CDDEB-E456-43B6-A3E6-D896BD693BA8}https://www.shoosmiths.co.uk/news/press-releases/shoosmiths-partner-named-top-female-business-leader-7977.aspxShoosmiths partner named one of top female business leaders in Manchester Laura Harper, IP & creative industries partner at Shoosmiths, has won the Business Support Award. Download hi-res image L-R John May, constuction partner at Freeths and Laura Harper, Shoosmiths IP and creative industries partner. Photographer: Carl Sukonik The announcement took place at a special gala lunch held on Thursday 10 July at the Lowry Hotel, where the city's business community gathered to hear which of the 78 nominees had won the 14 awards. Laura said: 'I'm very grateful to those who voted for me and for the fantastic support from my team who are exceptional individuals. 'I have always viewed my practice as providing a quality, accessible legal support service to those businesses and professionals operating in the creative and digital sectors. We've developed a team approach to working with our clients to help them to achieve their goals. Winning the Business Support award reflects the commercially relevant nature of the legal services we provide.' Gary Assim, head of Shoosmiths' national IP &amp; creative industries team, said: 'We aim to create the UK's leading IP team and Laura's appointment earlier this year has brought us closer to that target. Laura thoroughly deserves this award, having enhanced our high-level expertise in this field and by displaying an unwavering commitment to service delivery that really separates us from the competition.' Michael Taylor, Chairman of Downtown Manchester In Business said: 'These awards, and all the very worthy winners, are helping to break down stereotypes and promote positive female role models within business and enterprise across Manchester and the north west. 'With nearly 80 high quality nominees across 14 categories the voting was very close and everyone shortlisted should be very proud of their achievements. I've also no doubt the with the calibre of entrants, and the enthusiasm shown for these inaugural awards by everyone involved, that they will become a regular fixture on Manchester's business calendar for many years to come.' Laura acts for many creative and digital businesses, from multi-national technology companies, major fashion brands and communications agencies through to music businesses and professionals. She is based at the Spinningfields office and also at the city's digital media hub, The Sharp Project.Fri, 11 Jul 2014 00:00:00 +0100<![CDATA[Laura Harper ]]><![CDATA[ Laura Harper, IP & creative industries partner at Shoosmiths, has won the Business Support Award. Download hi-res image L-R John May, constuction partner at Freeths and Laura Harper, Shoosmiths IP and creative industries partner. Photographer: Carl Sukonik The announcement took place at a special gala lunch held on Thursday 10 July at the Lowry Hotel, where the city's business community gathered to hear which of the 78 nominees had won the 14 awards. Laura said: 'I'm very grateful to those who voted for me and for the fantastic support from my team who are exceptional individuals. 'I have always viewed my practice as providing a quality, accessible legal support service to those businesses and professionals operating in the creative and digital sectors. We've developed a team approach to working with our clients to help them to achieve their goals. Winning the Business Support award reflects the commercially relevant nature of the legal services we provide.' Gary Assim, head of Shoosmiths' national IP &amp; creative industries team, said: 'We aim to create the UK's leading IP team and Laura's appointment earlier this year has brought us closer to that target. Laura thoroughly deserves this award, having enhanced our high-level expertise in this field and by displaying an unwavering commitment to service delivery that really separates us from the competition.' Michael Taylor, Chairman of Downtown Manchester In Business said: 'These awards, and all the very worthy winners, are helping to break down stereotypes and promote positive female role models within business and enterprise across Manchester and the north west. 'With nearly 80 high quality nominees across 14 categories the voting was very close and everyone shortlisted should be very proud of their achievements. I've also no doubt the with the calibre of entrants, and the enthusiasm shown for these inaugural awards by everyone involved, that they will become a regular fixture on Manchester's business calendar for many years to come.' Laura acts for many creative and digital businesses, from multi-national technology companies, major fashion brands and communications agencies through to music businesses and professionals. She is based at the Spinningfields office and also at the city's digital media hub, The Sharp Project.]]>{B14FDEE2-564A-45FD-A812-D8B9F1FE63B6}https://www.shoosmiths.co.uk/client-resources/legal-updates/the-new-intellectual-property-act-2014-7916.aspxThe new Intellectual Property Act 2014 - guidance for designers and those commissioning designs The Intellectual Property Act 2014 (the act) received royal assent on 14 May 2014. The act will come into force between October 2014 and the end of 2015. Stemming from the Hargreaves Review on intellectual property reform, the act seeks to modernise and simplify certain aspects of intellectual property law including the law relating to designs, in order to promote innovation. Consequently, if product design, 3D Printing, fashion design, furniture or jewellery design are relevant to your business then these changes will be relevant to you. What do design rights protect? UK Unregistered Design Right protects the internal or external shape or configuration of an original design. This right will give you protection in the UK for a period equal to the earlier of: 10 years from the first marketing of articles produced from the design; or 15 years from the date of creation of the design. It should be noted however, that during the last 5 years of this protection period the design is subject to a licence of right entitling a third party to be granted a licence to make and sell products copying the design. If however a design is registered as a UK Registered Design, the proprietor of the registration has the exclusive right in the UK to exploit that design for a period of up to 25 years. The registration will need to be renewed every 5 years. Registered designs protect: two-dimensional designs or surface patterns; and the shape and configuration of an original design. Typically design right protects commercially produced designs and not 'artistic' designs which will generally attract copyright protection. What are the purposes of the changes to design rights? The purpose of the design right changes are to: simplify design law and allow the intellectual property framework to better support innovation improve the enforcement of designs and understanding the design rights of others, and improve the processes associated with the design framework What changes are made to design right protection? Unregistered Designs Designer is now the first owner: One fundamental change to existing law is that the act changes the deemed first owner of unregistered designs so that unless otherwise agreed, the designer will be the owner of the designs and not the person who commissioned the designs. Historically the first owner has been the commissioner. This amendment will bring design law into line with UK copyright law Trivial design features limited: The definition of Unregistered Design Right has been amended to limit the protection for trivial features of a design Clarification of definition of 'design': The act clarifies the definition of design so that to be original a design must not be commonplace in a 'qualifying country' rather than in the 'relevant design field', which caused confusion as to its geographical coverage. Qualifying Country is defined in the Copyright Designs and Patents Act 1988 (CDPA) Qualifying Person amended: The act has amended the provisions related to qualifying persons who can claim unregistered design right so that those who are economically active in the EU and other Qualifying Countries (as set out in the CDPA) have protection New exceptions to infringement: The act extends the exceptions for infringing unregistered designs, so that acts done privately for no commercial purpose or for teaching will not infringe unregistered design rights. A similar exception applies for acts done for experimental purposes, this is to encourage innovation Registered Designs Designer is now the first owner: The initial ownership position in respect of registered designs is also changed, as for unregistered designs i.e. the designer will be the initial owner unless otherwise agreed, rather than the commissioner. New Criminal Offence: The act makes intentional copying of a registered design a criminal offence. This applies to acts which take place in the course of business and the penalties for such an offence are now a fine or prison sentence. Again, this brings the penalties into line with sanctions for trade marks and copyright infringement. New exceptions to infringement: The act expands the exception from copyright infringement already available to registered UK designs to registered community designs, i.e. so that an authorised user of a UK or registered community design cannot be sued for infringement of associated copyright. Applicant does not need to be the owner of the design: The act removes the requirement for the applicant of a registered design application to be the proprietor of the design. New good faith exception to infringement: The act introduces a right of prior use, allowing a third party who has acted in good faith to continue to use a registered design which is subsequently registered by another. The aim of this amendment is to provide an entitlement to limited exploitation in respect of uses already made. New powers of enforcement: The act gives Trading Standards officers similar powers of enforcement for design offences as those already available to them in respect of copyright and trade marks. Simplified international registration: The act grants power for the Secretary of State to implement the Geneva Act of the Hague Agreement in the UK, this means that international registration procedures will be available for UK registered designs. At present UK designers can only access the Hague registration process via the EU community design registration. Harmonisation of financial liability: The act aligns the financial liability provisions for innocent infringement with those provisions under the Community Design Rights legislation. Simplified appeal process: The act allows a new route of appeal against Intellectual Property Office (IPO) decisions via an Appointed Person instead of appealing via the courts, such root already exist for trade mark appeals. This amendment is intended to allow appeals be cheaper and less time consuming. New opinions service for ownership, validity and infringement issues: The act provides for a voluntary non-binding opinion service to be introduced by the IPO which is similar to the opinions service which currently exists in respect of patents. Clarification: The act clarifies that proceedings for an offence committed against a partnership must be brought against the partnership. What are the other changes? The act has added a new exemption to the Freedom of Information Act for information obtained in the course of or derived from a continuing programme of research, a report of which is intended for future publication, where disclosure would prejudice the report. There is an obligation on the secretary of state to report on the IPO's activities each year to show how innovation and growth have been supported in the UK. The act provides for automatic extension of certain copyright provisions of the CDPA to materials of, and works first published in other countries i.e. it recognises certain foreign works. How will these changes affect me? It is hoped that the act will benefit many UK businesses and design professionals and make obtaining international registrations easier. If you are a designer or design company you should be aware of the implications of the new act to your business. If you are commissioning a design, it is important to ensure that you have an appropriate agreement in place with the designer to ensure that the design rights are owned by you. We recommend that you review your standard terms and conditions and, where necessary, amend them to ensure that appropriate provisions are included. If you would like to find out more about design rights and the new act or if you need any help with the agreements which relate to the commissioning or commercial exploitation of designs, please do get in touch.Thu, 03 Jul 2014 00:00:00 +0100<![CDATA[Laura Harper ]]><![CDATA[ The Intellectual Property Act 2014 (the act) received royal assent on 14 May 2014. The act will come into force between October 2014 and the end of 2015. Stemming from the Hargreaves Review on intellectual property reform, the act seeks to modernise and simplify certain aspects of intellectual property law including the law relating to designs, in order to promote innovation. Consequently, if product design, 3D Printing, fashion design, furniture or jewellery design are relevant to your business then these changes will be relevant to you. What do design rights protect? UK Unregistered Design Right protects the internal or external shape or configuration of an original design. This right will give you protection in the UK for a period equal to the earlier of: 10 years from the first marketing of articles produced from the design; or 15 years from the date of creation of the design. It should be noted however, that during the last 5 years of this protection period the design is subject to a licence of right entitling a third party to be granted a licence to make and sell products copying the design. If however a design is registered as a UK Registered Design, the proprietor of the registration has the exclusive right in the UK to exploit that design for a period of up to 25 years. The registration will need to be renewed every 5 years. Registered designs protect: two-dimensional designs or surface patterns; and the shape and configuration of an original design. Typically design right protects commercially produced designs and not 'artistic' designs which will generally attract copyright protection. What are the purposes of the changes to design rights? The purpose of the design right changes are to: simplify design law and allow the intellectual property framework to better support innovation improve the enforcement of designs and understanding the design rights of others, and improve the processes associated with the design framework What changes are made to design right protection? Unregistered Designs Designer is now the first owner: One fundamental change to existing law is that the act changes the deemed first owner of unregistered designs so that unless otherwise agreed, the designer will be the owner of the designs and not the person who commissioned the designs. Historically the first owner has been the commissioner. This amendment will bring design law into line with UK copyright law Trivial design features limited: The definition of Unregistered Design Right has been amended to limit the protection for trivial features of a design Clarification of definition of 'design': The act clarifies the definition of design so that to be original a design must not be commonplace in a 'qualifying country' rather than in the 'relevant design field', which caused confusion as to its geographical coverage. Qualifying Country is defined in the Copyright Designs and Patents Act 1988 (CDPA) Qualifying Person amended: The act has amended the provisions related to qualifying persons who can claim unregistered design right so that those who are economically active in the EU and other Qualifying Countries (as set out in the CDPA) have protection New exceptions to infringement: The act extends the exceptions for infringing unregistered designs, so that acts done privately for no commercial purpose or for teaching will not infringe unregistered design rights. A similar exception applies for acts done for experimental purposes, this is to encourage innovation Registered Designs Designer is now the first owner: The initial ownership position in respect of registered designs is also changed, as for unregistered designs i.e. the designer will be the initial owner unless otherwise agreed, rather than the commissioner. New Criminal Offence: The act makes intentional copying of a registered design a criminal offence. This applies to acts which take place in the course of business and the penalties for such an offence are now a fine or prison sentence. Again, this brings the penalties into line with sanctions for trade marks and copyright infringement. New exceptions to infringement: The act expands the exception from copyright infringement already available to registered UK designs to registered community designs, i.e. so that an authorised user of a UK or registered community design cannot be sued for infringement of associated copyright. Applicant does not need to be the owner of the design: The act removes the requirement for the applicant of a registered design application to be the proprietor of the design. New good faith exception to infringement: The act introduces a right of prior use, allowing a third party who has acted in good faith to continue to use a registered design which is subsequently registered by another. The aim of this amendment is to provide an entitlement to limited exploitation in respect of uses already made. New powers of enforcement: The act gives Trading Standards officers similar powers of enforcement for design offences as those already available to them in respect of copyright and trade marks. Simplified international registration: The act grants power for the Secretary of State to implement the Geneva Act of the Hague Agreement in the UK, this means that international registration procedures will be available for UK registered designs. At present UK designers can only access the Hague registration process via the EU community design registration. Harmonisation of financial liability: The act aligns the financial liability provisions for innocent infringement with those provisions under the Community Design Rights legislation. Simplified appeal process: The act allows a new route of appeal against Intellectual Property Office (IPO) decisions via an Appointed Person instead of appealing via the courts, such root already exist for trade mark appeals. This amendment is intended to allow appeals be cheaper and less time consuming. New opinions service for ownership, validity and infringement issues: The act provides for a voluntary non-binding opinion service to be introduced by the IPO which is similar to the opinions service which currently exists in respect of patents. Clarification: The act clarifies that proceedings for an offence committed against a partnership must be brought against the partnership. What are the other changes? The act has added a new exemption to the Freedom of Information Act for information obtained in the course of or derived from a continuing programme of research, a report of which is intended for future publication, where disclosure would prejudice the report. There is an obligation on the secretary of state to report on the IPO's activities each year to show how innovation and growth have been supported in the UK. The act provides for automatic extension of certain copyright provisions of the CDPA to materials of, and works first published in other countries i.e. it recognises certain foreign works. How will these changes affect me? It is hoped that the act will benefit many UK businesses and design professionals and make obtaining international registrations easier. If you are a designer or design company you should be aware of the implications of the new act to your business. If you are commissioning a design, it is important to ensure that you have an appropriate agreement in place with the designer to ensure that the design rights are owned by you. We recommend that you review your standard terms and conditions and, where necessary, amend them to ensure that appropriate provisions are included. If you would like to find out more about design rights and the new act or if you need any help with the agreements which relate to the commissioning or commercial exploitation of designs, please do get in touch.]]>{0EA8DB6F-6C92-4971-BD72-B694E0D94022}https://www.shoosmiths.co.uk/client-resources/legal-updates/the-saucy-fish-co-interim-injunction-against-aldi-7752.aspxThe Saucy Fish Co. secures interim injunction against &#39;copycat&#39; Aldi The Saucy Fish Co. (owned by Icelandic Seachill) has recently secured a UK High Court agreed interim injunction against German supermarket chain Aldi, requiring it to stop selling copycat products. One of The Saucy Fish Co. registered marks Icelandic argued that Aldi's Saucy Salmon Fillets were "confusingly similar" to The Saucy Fish Co's products and infringed their registered trade marks. Icelandic Seachill owns the Community trade mark registration for THE SAUCY FISH CO. along with a number of other UK registrations for marks in various colour schemes, including the mark on the left. The injunction was obtained by consent, and contained a cross-undertaking as to damages from The Saucy Fish Co. meaning that The Saucy Fish Co. will be liable for any losses Aldi incurs from the withdrawal of the product from its shelves in the event that they successfully defend the claim at trial. 5 years ago Diageo sued Sainsbury's over its 'Pimms' copy, the gin-based 'Pitchers', in what was a similarly high profile case. Such cases are rare however and generally speaking brands are afraid of suing supermarkets and other retailers because of the relationships that the brands have with them (in most cases the retailers are customers). Aldi cannot rely on this protection in the same way that other major supermarkets can because they do not generally stock the real item next to their own products. So The Saucy Fish Co. were not worried about suing their own customers, which is often a key factor for brands in cases like this. With this initial success for the Saucy Fish Co. it is unlikely that the case will now reach trial and a settlement looks like the most likely outcome. You win some, you lose some It is not all bad news for Aldi however as the retailer has successfully defended a claim by Moroccanoil Israel Limited (MIL) for passing off. Both these companies sell their argan oil hair products "Miracle Oil" (Aldi) and "Moroccanoil" (MIL) using similar turquoise packaging with orange and white writing, however Judge Richard Hacon decided Aldi's product did not amount to passing off. On whether Aldi had attempted to create a product which would remind the public of Moroccanoil, Judge Hacon wrote "I think Aldi intended to do so and succeeded, to the point that some of the public interested in hair oil thought that the similarities were cheeky and might infringe rights relating to design", however "that is not passing off". MIL may still rely on their case for trade mark infringement. However, this claim has been stayed while the Office for Harminisation in the Internal Market considers claims for trade mark invalidity. A new focus on copycat confusion? These cases come at a time when copycat packaging practices are in the spotlight. The UK government is currently considering introducing a right to seek civil injunction for brand owners who cannot rely on trade mark rights as The Saucy Fish Co did. Following open consultation on the issue the Department for Business Innovation &amp; Skills and the Intellectual Property Office are contemplating an amendment to consumer protection regulations that, if introduced, are likely to be welcomed by brand owners but the same commercial reasons that prevent them from enforcing their existing trade mark rights against supermarkets that are also their customers are likely to mean that the new powers are rarely used. Tue, 03 Jun 2014 00:00:00 +0100<![CDATA[Anastasia Fowle ]]><![CDATA[ The Saucy Fish Co. (owned by Icelandic Seachill) has recently secured a UK High Court agreed interim injunction against German supermarket chain Aldi, requiring it to stop selling copycat products. One of The Saucy Fish Co. registered marks Icelandic argued that Aldi's Saucy Salmon Fillets were "confusingly similar" to The Saucy Fish Co's products and infringed their registered trade marks. Icelandic Seachill owns the Community trade mark registration for THE SAUCY FISH CO. along with a number of other UK registrations for marks in various colour schemes, including the mark on the left. The injunction was obtained by consent, and contained a cross-undertaking as to damages from The Saucy Fish Co. meaning that The Saucy Fish Co. will be liable for any losses Aldi incurs from the withdrawal of the product from its shelves in the event that they successfully defend the claim at trial. 5 years ago Diageo sued Sainsbury's over its 'Pimms' copy, the gin-based 'Pitchers', in what was a similarly high profile case. Such cases are rare however and generally speaking brands are afraid of suing supermarkets and other retailers because of the relationships that the brands have with them (in most cases the retailers are customers). Aldi cannot rely on this protection in the same way that other major supermarkets can because they do not generally stock the real item next to their own products. So The Saucy Fish Co. were not worried about suing their own customers, which is often a key factor for brands in cases like this. With this initial success for the Saucy Fish Co. it is unlikely that the case will now reach trial and a settlement looks like the most likely outcome. You win some, you lose some It is not all bad news for Aldi however as the retailer has successfully defended a claim by Moroccanoil Israel Limited (MIL) for passing off. Both these companies sell their argan oil hair products "Miracle Oil" (Aldi) and "Moroccanoil" (MIL) using similar turquoise packaging with orange and white writing, however Judge Richard Hacon decided Aldi's product did not amount to passing off. On whether Aldi had attempted to create a product which would remind the public of Moroccanoil, Judge Hacon wrote "I think Aldi intended to do so and succeeded, to the point that some of the public interested in hair oil thought that the similarities were cheeky and might infringe rights relating to design", however "that is not passing off". MIL may still rely on their case for trade mark infringement. However, this claim has been stayed while the Office for Harminisation in the Internal Market considers claims for trade mark invalidity. A new focus on copycat confusion? These cases come at a time when copycat packaging practices are in the spotlight. The UK government is currently considering introducing a right to seek civil injunction for brand owners who cannot rely on trade mark rights as The Saucy Fish Co did. Following open consultation on the issue the Department for Business Innovation &amp; Skills and the Intellectual Property Office are contemplating an amendment to consumer protection regulations that, if introduced, are likely to be welcomed by brand owners but the same commercial reasons that prevent them from enforcing their existing trade mark rights against supermarkets that are also their customers are likely to mean that the new powers are rarely used. ]]>